The CJEU confirms the validity of the protection of Lego’s block design

The CJEU confirms the validity of the protection of Lego’s block design

The General Court of the European Union (hereinafter, the CJEU) has once again affirmed its support for the intellectual property protection of the renowned Danish company Lego, confirming the validity of the design of its iconic gaming block.

The legal dispute, which has been ongoing in the European legal arena for several years, revolves around the confrontation between Lego and the German company Delta Sport Handelskontor.

Legal background

In 2010, Lego obtained protection for the design of its gaming block in the European Union. It is essential to remember that community trademarks and designs are valid throughout the territory of the European Union, coexisting with those registered nationally.

However, nine years later, at the request of Delta Sport Handelskontor, the Board of Appeal of the European Union Intellectual Property Office (EUIPO), the office responsible for granting protection to community trademarks and designs, issued a decision annulling such protection.

The argument was that all visual characteristics of the LEGO block were exclusively dictated by its technical function of allowing assembly and disassembly with other gaming blocks.

Upon learning of the resolution, Lego filed an appeal with the General Court of the European Union seeking the annulment of said resolution, and in 2021, the CJEU responded satisfactorily to this request for the Danish company. This led to the EUIPO revoking its 2019 decision and issuing a new resolution rejecting Delta Sport Handelskontor’s annulment request.

Through this new resolution, the EUIPO considered it unnecessary to cancel the protection of the Lego block, as it could fall under an exception in the Regulation on Community Designs. This exception allows mechanical accessories of modular products to be a significant element of the innovative features of modular products and, therefore, eligible for protection.

In response to this resolution, the German company filed another appeal with the General Court in 2022, seeking the annulment of the same, which has been the subject of resolution in the judgment analyzed in this entry.

Recent CJEU judgment

A design may be valid for protection if at least one function of the product is not dictated by the technical function

In this context, the recent judgment in case T-537/22 from the CJEU has addressed the appeal filed by Delta Sport Handelskontor and reaffirmed the validity of the decision issued by the CJEU in 2021. The judgment indicates that the Board of Appeal of the EUIPO did not examine the relevance of the application of the exception invoked by Lego and did not consider that “a community design subsists in a design that serves to allow the assembly or multiple connections of mutually interchangeable products within a modular system.”

Building on its jurisprudence and expanding it, the CJEU’s judgment argues that a design is only declared null if all its characteristics are excluded from protection. In this case, since some of Delta Sport Handelskontor’s objections relate only to one characteristic among several considered by the EUIPO, they are deemed ineffective and dismissed.

Additionally, the CJEU highlights that while a design must be declared null if all the characteristics of its appearance are dictated solely by the technical function of the product it relates to, if at least one characteristic is not dictated by the technical function, the design cannot be declared invalid.

The General Court also notes that Delta Sport Handelskontor, as the appealing party, bears the burden of proof, meaning it must argue and provide sufficient evidence to demonstrate the accuracy of its allegations.

In this regard, the CJEU considers that the German company has not provided sufficient evidence to demonstrate that the design of the gaming block in question does not meet the requirements to qualify for the exception protecting modular systems, such as novelty and uniqueness.

It is essential to note that, in response to decisions from the General Court, an appeal can be filed with the Court of Justice of the European Union, limited to legal issues, within a period of two months and ten days from the notification of the decision. This appeal will undergo a pre-admission procedure and must be accompanied by a request outlining the significant issues for the unity, coherence, or development of Union law raised by the appeal.

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