Member Article

Since 2010, the Danish toy giant Lego has had a registered design right in the EU to the toy brick, commonly referred to as «the Lego brick»:

Photo reference: https://euipo.europa.eu/eSearch/#details/designs/001664368-0006

In 2019, following an objection from the German company Delta Sport Handelskontor (also referred to as the applicant), the European Union Intellectual Property Office (EUIPO) revoked Lego’s design protection. EUIPO argued that all the design elements of the Lego brick were dictated by the product’s technical function, which was to enable assembly and disassembly from the rest of the bricks in a set. The main rule in design right is that it is not possible to have exclusive rights to designs that are determined by technical function.

Lego appealed the decision to the EU General Court, which in case T-515/19 overturned EUIPO’s decision to declare the registration invalid. The case was sent back to EUIPO for a new assessment, after which EUIPO (and Board of Appeal) decided to reject Delta Sport Handelskontor’s invalidation claim. Following the General Court’s assessment, EUIPO Board of Appeal concluded there was no reason to declare the design registration invalid as the design was covered by the special exemption rule for modular systems, according to Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community designs Article 8(3).

Delta Sport Handelskontor brought a new case to the General Court in 2022, claiming that EUIPO Board of Appeal’s new decision should be annulled. Delta Sport Handelskontor demanded the decision be revoked as illegal under EU law. By its decision on 24 January 2024, the General Court dismissed the complaint.

The General Court clarified in its decision that a design registration for modular systems can only be declared invalid if all of its elements are excluded from protection. This means in practice that all elements must be determined by a technical function. In this case, six of the seven design elements were determined by such a technical function. However, the last element, concerning the smooth/even surface, was found to be protectable. The conclusion was therefore that the entire design registration was valid, and Lego retains the exclusive right to exploit the design.

Delta Sport Handelskontor also argued that the modular system exemption was misapplied on two levels. First, it was argued that the exemption should not be applied to the design as a whole. According to Delta Sport Handelskontor, it should only be applied in connection with the interlocking elements. Secondly, it was argued that it was incorrect of the EUIPO Board of Appeal to impose the burden of proof for the novelty and individual character requirement on Delta Sport Handelskontor. Normally, the design holder has this burden of proof.

The General Court first addressed the burden of proof argument, stating that it is the applicant who must prove that the design holder does not meet the requirements in Article 8 first and second paragraphs, i.e., elements of product appearance that are solely determined by the product’s function, and elements that must necessarily be reproduced to mechanically connect to another product.

Like the Norwegian Industrial Property Office (NIPO), EUIPO (or Board of Appeal) does not examine the substantive sides of design applications. Only formalities are assessed. In accordance with Article 85, there is thus a presumption that the registration is valid, including that it is new and has individual character, until the contrary is proven. As it follows from the respective provisions, a design is considered new if no identical design has been made publicly available before the day the application was filed, and has individual character if the overall impression it gives the informed user differs from the overall impression such a user receives from other designs that have been made publicly available before the time of the application.

According to the General Court, it would not be possible to require the holder to have to document that the design was new and had individual character, as it would mean that the holder would have to prove that the design meets the two requirements in relation to all earlier designs that were made available before the application date. In other words, the holder would have had to prove the absence of such availability of any such design that could constitute registration obstacles according to the requirement that it should be new and have individual character. This would have entailed a negative burden of proof, which by its nature is impossible or substantially difficult to produce. The rule is thus that it is up to the applicant to prove invalidity, after which the holder must produce counterarguments and evidence. When Delta Sport Handelskontor failed to prove invalidity, the conclusion is that the design is valid.

Delta Sport Handelskontor also argued that the EUIPO Board of Appeal’s conclusion was incorrect as it did not account for the Lego brick design being publicly available for decades prior to the application date for the contested design registration, according to Article 7. A general prerequisite for design registration is that the design is new, this novelty requirement was consequently not met. Delta Sport Handelskontor had not presented concrete evidence for this. However, according to Article 63, EUIPO in invalidity cases shall only consider the parties’ presented facts and evidence. Delta Sport Handelskontor argued that this limitation was not relevant in this case since the Lego brick design was well-known from earlier, interpreting this as an argument that this was a so-called «manifest fact» that the court could consider independently of the evidence.

To this, the General Court stated that the publication of a design within the meaning of Article 7(1) does not as such constitute a fact within the meaning of Article 63(1), but the result of a factual assessment. The conclusion was therefore that the earlier design was not something the court should consider, regardless of whether the product that the design is part of or relates to has been available on the market for a long period and would generally be known to the informed user. The burden of proof for this falls on the applicant, i.e., Delta Sport Handelskontor.

We believe there are good reasons to uphold the General Court’s result in this case. It also aligns well with the views after Norwegian design right legislation and practice. It remains to be seen if Delta Sport Handelskontor will appeal the case to the EU Court of Justice, which will be the highest instance in this matter.

The decision can be read here

The design registration can be found here