General Court (Second Chamber): The Bench comprising of V. Tomljenović, President, F. Schalin and I. Nõmm (Rapporteur), JJ., settles the design right dispute regarding a building block toy set in favour of Danish toy manufacturer, Lego. The Bench said, the European Union Intellectual Property Office (EUIPO) erred in law in declaring the design invalid.
The applicant, Lego A/S, filed an application for registration of a Community design with the EUIPO. The goods to which the contested design was intended to be applied were in Class 21.01 of the Locarno Agreement, 1968 and corresponded to the following description: “building blocks from a toy building set”. By its decision on 10 -04-2019, the Third Board of Appeal (BoA) of EUIPO declared the contested design invalid, holding that that all the features of appearance of the product concerned by the contested design were solely dictated by the technical function of the product, namely to allow assembly with, and disassembly from, the rest of the bricks of the set.
Analysis by the Court
The main question before the Court was whether the proprietor of a contested design can claim the benefit of Article 8(3) of Regulation No 6/2002 (which provides an exception for Art. 8(2)) for the first time before the BoA. The Court answered that no provision of Regulation No 6/2002 precludes the benefit of the exception laid down in Article 8(3) of that regulation from being relied on, for the first time, before the BoA as the BoA has jurisdiction, inter alia, to rule on the claims of the proprietor of the contested design relating to the benefit of Article 8(3) and it could not be deprived of that jurisdiction merely because the proprietor of the contested design had chosen to claim the benefit of Article 8(3) for the first time at the stage of appeal proceedings. Similarly, since neither Regulation No 6/2002 nor the rules of procedure of the BoA specify the conditions for the application of Article 8(3) of that regulation, it was not possible to consider that the applicant’s reliance on that provision, for the first time before the Board of Appeal, was out of time.
To examine whether the exempting Article 8(3) was applicable on the instant case or not the Bench assessed the application of preceding clauses of the same Article. Article 8(1) excludes protection under the law on Community designs for features of appearance of a product where considerations other than the need for that product to fulfil its technical function, in particular visual aspect had not played any role in the choice of those features. Furthermore, since, in order to fulfil the function of assembly and disassembly of the product concerned by the contested design, the features of appearance of that design must be reproduced in the exact dimensions in order to permit their connection, they also fall within Article 8(2) of that regulation. Thus, the Bench opined that such features would fall within both Article 8(1) and Article 8(2) since they were both solely dictated by the technical function of the product, namely to allow the connection and disconnection of that product, and constitute features of interconnection.
EUIPO could not apply merely Article 8(1) to the features which fall within both Articles 8(1) and 8(2) as the provisions of Article 8 must be interpreted in such a way as to preserve their effectiveness.
The Court opined that, the interpretation given by EUIPO could not be adopted since it was too restrictive. The BoA erred in law since it failed to assess whether the contested design met the requirements of Article 8(3).
The Court of Justice stated that, in order to determine whether the features of appearance of a product were solely dictated by its technical function, it must be established that that technical function was the only factor that determined those features. Accordingly,
If at least one of the features of appearance of the product concerned by a contested design was not solely dictated by the technical function of that product, the design at issue could not be declared invalid under Article 8(1).
Rejecting the findings of BoA, the General Court held that the smooth surface of the upper face of the toy brick was a feature of the specific appearance of the product concerned by the contested design and was not limited to a mere ‘absence of studs on the upper surface of the brick’. Hence, the BoA infringed Article 8(1) as it did not identify all the features of appearance of the product concerned by the contested design and, a fortiori, did not establish that all of those features were solely dictated by the technical function of that product.
However, the Court dismissed the plea for making alteration in the findings of BoA opining that the conditions for alteration were not satisfied as the BoA had not established all the elements of fact and of law to enable the Court to determine the decision.
The decision of the Third Board of Appeal was annulled. The EUIPO and Delta Sport Handelskontor GmbH (Intervener) were ordered to bear their own costs and each to pay half of the costs incurred by Lego A/S.[Lego A/S, v. European Union Intellectual Property Office (EUIPO), T‑515/19, decided on 24-03-2021]
Kamini Sharma, Editorial Assistant has reported this brief.