The European Union Intellectual Property Office had concluded in its decision by the Appeal Board that Lego’s new brick design would be invalidated as it was solely dictated by technical function. But in appeal to the EU General Court, it was decided that since the block in consideration was part of a modular system, it would be exception saving it from invalidation.
Solely dictated by technical function –
The design of the block in consideration was registered as a community design in 2010, for which Lego is the proprietor. An application of design invalidity was made by Delta Sport Handelsknotor. The Board of Appeal of the EUIPO found that all the features of the product in the contested design were ‘dictated by technical function’ and the design was declared invalid.
In accordance with the Regulation on Community Designs, “a design cannot as a main rule be protected if the design is dictated by a product's technical function”.
This regulation on design protection ensures that solely technical features of a design should be protected by patents rather than design law.
In its deliberation on the design the Board of Appeals identified six features of the block –
i. The row of studs on the upper face of the brick
ii. The row of smaller circles on the lower face of the brick
iii. Two rows of bigger circles on the lower face
iv. Rectangular shape of the brick
v. Thickness of walls of the brick
vi. Cylindrical shape of the studs
The Board decided that all these features were solely dictated by a technical function of assembling and disassembling. The smooth surface in the upper face of the brick next to the studs was considered to be dictated by technical function by the Board, but Lego argued that the smooth surface was present for aesthetic reasons, this was dismissed by the Board for being a “subjective” reason which would not change the Board’s “objective” reasoning.
Modular Exception –
The General Court judgement however considered the Lego block to be under the modular systems exception. According to the judgement the Board was supposed to consider whether the design allowed “the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system”. The General Court noted that the Board should have assessed whether the design could have been exempted from invalidation under the modular systems exception, which it failed to do. The smooth surface feature is a feature of appearance of the block but is not within the six identified by the Board for which it did not establish that all those features were solely dictated by a technical function.
Conclusion
The decision by the General Court is as strong precedent for the modular systems exception, where a design can be saved from invalidation in the grounds of technical function. This protects the innovative characteristic of modular products. The Lego brick is a classic example of a modular system, the extension of this decision on other products in the future is an interesting area to observe.