LEGO bricks: the validity of the design is confirmed

The court of the European Union, with the decision of the proceeding T-537/22, confirmed the validity of the famous LEGO brick as a model.

The case at issue started in 2016, when a German company filed before the European Union intellectual Property Office (EUIPO) an application for a declaration of invalidity of the LEGO model, depicted in the following prospectives:

In particular, the company argued that the aesthetic features of the product object of the model were determined merely by its technical function and, for such reason, the model was to be considered void.

The application for the declaration of invalidity was however rejected.

The applicant thus filed an appealed and its complaints were accepted by the competent board which, after having identified the aesthetic features of the contested model, declared it void as the above-mentioned features – as claimed by the German company – were determined exclusively by its technical function allowing the assembly and disassembly of the game bricks with each other.

The company owner of the model filed a new appeal against such decision which was thus annulled.

The Court found that the Board of Appeal not only failed to evaluate the specific exception to the model invalidity provided for by the EU Regulation no. 6/2002 – which enables the protection of modular systems – but also did not identify all aesthetic features of the interested product. Specifically, the characteristic of the smooth surface of the upper side was not identified and, consequently, it was not proven that all aesthetic features of the brick were dictated exclusively by its technical function.

The third Board of appeals, then called to rule on this issue, decided that if even all aesthetic features of the Lego brick were to be dictated exclusively by its technical function, the appealed design could not be declared void because it benefited from the specific exception that allows the protection of modular systems.

Therefore, the German company, addressed once again the EU Court.

The European Judge observed that a model is declared void only if all its features are such as to be excluded from protection. As a consequence, the arguments of the applicant aimed at excluding the protection of the brick but having as object the only feature of the smooth surface of the upper side of the brick would have the only result to prejudice the protection of said feature and not the others.

Such argumentations, therefore, were considered irrelevant and not suitable to call into question the validity of the design as a whole.

Moreover, according to the plaintiff, it was up to the owner of the contested design to prove the prerequisites for the application of the exception of the modular systems pursuant to art. 8 (3) of Regulation 6/2002.

The Court, in this regard, noted that burdening the holder with the proof of such prerequisites – novelty and individual character of the model – would represent a diabolic probatio. As a matter of fact, the owner for the sake of argument would have to prove the absence of disclosure of any design that could prevent its model from being considered new or featured with individual character.

Lastly the plaintiff charges the Board of appeals of failing to consider some known and/or undiscussed facts, in the evaluation of the disclosure of prior models and designs.

The Court, in this regard, points out that the disclosure of a prior design or model cannot be considered a known fact that does not require demonstration. It follows that the plaintiff could not charge the board of appeal with failing to considered known facts in assessing the novelty and individual character of the contested brick.

In hindsight, the Board of Appeal did not commit an incorrect assessment as it based its conclusions on the factual evaluation of the evidences presented by the plaintiff on this regard. These evidences were insufficient to demonstrate the disclosure of prior designs and models before the filing date of the registration application of the contested design or model.

The complaints of the plaintiff were finally rejected and thus also the appeal on its whole, confirming the validity of the LEGO brick.

Head of Trademark & Design Department
Italian and European Trademark Attorney

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