On 24 March 2021, the European General Court (EGC) issued a judgement siding with LEGO by overturning a declaration of invalidity made by the European Intellectual Property Office (EUIPO) Board of Appeal on 10 April 2019 regarding a Registered Community Design (RCD), No. 1664368‑0006, filed by the toy manufacturer on 2 February 2010.
The design in question relates to a 4x3 plate block with four centre studs. While the appearance of the block may be simple, this piece is key to a variety of LEGO sets, in particular the LEGO Minifigures line of products serving as a stand for the Minifigures. This RCD, therefore, helps LEGO protect an entire line of products from potential infringers.
The decision made by the EUIPO Board of Appeal on 10 April 2019, stated that all the features of appearance of the product were solely dictated by the technical function of the building brick, namely assembly with, and disassembly from, the rest of the bricks of the set. These features of appearance as described by the EUIPO Board of Appeal were:
· The row of studs on the upper face of the brick.
· The row of smaller circles on the lower face of the brick.
· The two rows of bigger circles on the lower face of the brick.
· The rectangular shape of the brick.
· The thickness of the walls of the brick.
· The cylindrical shape of the studs.
LEGO disagreed with this decision taking the case to the EGC arguing that the EUIPO Board of Appeal disregarded the creative aspects of the contested design, in particular the smooth surface on either side of the row of four studs on the upper side.
The EUIPO argued that the lack of additional studs on the upper side of the brick allows two bricks to be twisted when connected by a single stud at the end of the row, thereby allowing a bend to be built. This, argues the EUIPO, provides a technical function.
Ultimately, on 24 March 2021 the EGC agreed with LEGO and annulled the decision of the Board of Appeal of 10 April 2019, meaning that the RCD in question is valid. The EGC highlighted that the EUIPO Board of Appeal, in its 2019 judgement, failed to identify all the features of appearance of the product concerned by the contested design and, consequently, did not establish the solely technical nature of all those features.
It may not be the end of the road for LEGO with regards to this case, as the intervener, Delta Sport Handelskontor GmbH (established in Hamburg), now has the opportunity to appeal this decision at the highest European court, the European Court of Justice. However, if the decision is not appealed to the higher court and assuming LEGO continue renewing the right, the Danish toy giant will have successfully protected their design, meaning competitors will not be able to manufacture this piece until the design expires on 2 February 2035.
For more information regarding this case, see the full decision made by the European General Court, T‑515/19.
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