The Court of the European Union, by decision of March 24, 2021, in case T-515/19, annulled the decision of the EUIPO Board of Appeal which declared invalid the LEGO building brick stating that the aesthetic features of the product (registered as a design and model) were uniquely dictated by the technical function of the product. On this aspect, the Regulation n. 6/2002 art. 8 (1) provides that “a community model or design does not give rights to the features of the appearance of a product defined solely by the technical function thereof”.
In the case under exam, the contested design or model was registered on February 2, 2010 with no. 1664368-0006 for “building blocks from a toy building set”.
On December 8, 2016, Delta Sport Handelskontor GmbH filed an application for a declaration of invalidity of a design or model de quo stating that all the features of the appearance of the product concerned by the contested design or model were dictated solely by the technical function of the product and, for this reason, excluded by the protection pursuant to the article 8 paragraph 1 of the regulation mentioned above.
Based on such provision, the EUIPO Board of Appeal declared invalid the contested design or model as it considered that all the aesthetic features of the product concerned by the contested design or model were as a matter of fact dictated only by (technical) function allowing the assembly with and disassembly from the rest of the building block set.
LEGO appealed to the Court of the European Union to obtain the annulment of the decision.
Deciding on the question, the European Court reminded that, exceptionally, the mechanical fittings of modular products can constitute an important element of the innovative features of the modular products and a precious asset for their marketing, so they should be eligible for protection. It follows that a community design or model gives rights on a design or model intended to allow the assembly or the multiple connection of interchangeable products inside of a modular system.
In particular, a design or model must be declared invalid if all the features of its appearance are imposed exclusively by the technical function of the product to which it refers. This means that if at least one of the features of the product interested by a design or model is not imposed exclusively by its technical function the design or model under exam cannot be invalid.
Therefore all the above has found application in case under exam. In particular, to the European judge, the LEGO building brick could not be declared invalid as it has a smooth surface on two sides of the row of four studs of the upper surface and this feature is not present among the features identified by the EUIPO Board of the Appeal (despite being a feature of the appearance of the product) in the context of the annulment.
It is up to the EUIPO to verify that all features of the appearance of the product concerned by the design or model were imposed exclusively by its technical function, so, by failing to verify such aspect, the Board of Appeal, denying the protection of the building brick, violated the provisions of the regulation on community designs and models.