http://ipkitten.blogspot.com/2024/01/another-brick-in-legos-modular-systems.html
By decision of 24 January 2024 (T-537/22), the General Court of the European
Union (GC) confirmed the validity of the Registered Community Design (RCD) by
Lego A/S (Lego) “Building blocks from a toy building set” by stating that an
RCD is invalid only if all its features are excluded from protection. In the
case at issue, some of the invalidity arguments filed by the company Delta Sport
Handelskontor GmbH (Delta) concerned only one of the features relied on by the European
Union Intellectual Property Office (EUIPO). Therefore, invalidity arguments should
be dismissed as irrelevant. Delta also failed to demonstrate that the Lego design
did not meet the requirements for the application of the exception of
protection of modular systems, namely novelty and individual character.
Background
It is worth recalling the long history of this
case.
On 2 February 2010 Lego obtained RCD No. 001664368-006 with description “Building blocks from a toy
building set” with the following views:
In 2016, Delta filed an application for
declaration of invalidity with the EUIPO relying on Article 25(1)(b) of Council Regulation (EC) No 6/2002 of 12
December 2001 on Community Designs (Regulation) in conjunction with Articles 4
to 9 of the same Regulation.
Delta claimed that all the features of
appearance of the product concerned by the contested design were solely
dictated by the technical function of the product and, for that reason, were
excluded from protection under Article 8(1) of the Regulation.
The Invalidity Division of the EUIPO rejected
the application by decision of 30 October 2017. Delta appealed.
By decision of 10 April 2019, the Board of Appeal of EUIPO
declared the invalidity of the RCD on the ground that all the features of
appearance of the product concerned by that design were solely dictated by the
technical function of that product, within the meaning of Article 8(1) of the Regulation. Lego appealed.
By decision of 24 March 2021 (T-515/19), commented by the IPKat here, the GC annulled the decision. The GC found
that the Board of Appeal infringed:
laying down an exception protecting modular systems, in that it had not
assessed whether the contested design met the requirements of that article,
which, moreover, the intervener had relied on before it;
in that it had not identified all the features of appearance of the product
concerned by the contested design, in particular the smooth surface of the
upper face of the toy brick (“the smooth surface”), and, a fortiori, did
not establish that all those features were solely dictated by the technical
function of that product.
The case was then referred back to the Third
Board of Appeal.
By decision of 30 May 2022 (R-1524/2021-3), the Board of Appeal dismissed the
appeal on the ground that the application for invalidity was not substantiated.
In particular, the Board of Appeal found that – even if all the features of
appearance of the product concerned by the contested design, including “the
smooth surface” – were solely dictated by the technical function of that
product, within the meaning of Article 8(1) of the Regulation, the contested design could not be
declared invalid as it fell within the exception protecting modular systems
referred to in Article 8(3) of the Regulation. That provision
was applied by way of derogation from Article 8(2) of the Regulation, given
that, as found by the Board of Appeal, all the characteristics of the
appearance of the product covered by the contested design were covered not only
by Article 8(1) of the Regulation, but also by Article 8(2) of the same Regulation.
Delta appealed the decision to the GC.
The
General Court’s decision
The GC disagreed by upholding the Board of
Appeal’s decision and ruled as follows.
A) Alleged violation of Article 8(2) of the
Regulation
Delta argued that the Board of Appeal infringed
Article 8(2) of the Regulation since one of the
seven characteristics identified by the Board of Appeal, “the smooth surface”,
does not meet the requirements laid down in said article. The GC recalled that
“a design is declared invalid, in accordance with the provisions of Article
8 of Regulation No 6/2002, only in the case where all of its characteristics
are excluded from protection. If at least one of its characteristics is
protected, in particular due to the application of the exception provided for
in Article 8(3) of that regulation, the design remains valid” (para 37-38).
B) Alleged infringement of Article 8(3) of the
Regulation
Delta claimed two errors of law since the Board
of Appeal applied Article 8(3) of Regulation in relation to the
contested design as a whole and not in relation to the features of
interconnection only and secondly placed on Delta the burden of proof relating
to the conditions of novelty and individual character.
The GC recalled that “for a design to fall
within the exception protecting modular systems provided for in that article,
it must meet two conditions: first, meet the conditions of Articles 5 (novelty)
and 6 (individual character) of that regulation and, secondly, serve the
purpose of allowing the multiple assembly or connection of mutually
interchangeable products within a modular system” (para 47). In addition,
novelty and individual character of an RCD are presumed during the registration
procedure (para 57) and “it would be contrary to the very logic of the
system of Community designs to require, as the applicant proposes, the holder
of a registered design wishing to rely on the exception provided for in Article
8(3) of Regulation No 6/2002 to prove compliance with the conditions of novelty
and individual character provided for in Articles 5 and 6 of that regulation”
(para 61). In fact, that would constitute a negative proof (probatio
diabolica) (para 65). Therefore, since Delta failed to prove any disclosure,
the Board of Appeal had correctly concluded that there was no need to carry out
the assessment of the novelty and individual character of the contested design
(para 78).
C) Alleged violation of Article 63(1) of the
Regulation
Delta argued that the Board of Appeal did not consider,
in the context of the assessment of the disclosure of earlier designs, certain
well-known and/or undisputed facts as well as some information provided by
screenshots of a website and by a reference to a judgment of the Court of
Justice of the European Union in a related case.
The GC replied that “The disclosure of an
earlier design within the meaning of Article 7(1) of Regulation No 6/2002 does
not, as such, constitute a fact within the meaning of Article 63(1) of Regulation
No 6/2002, but the ‘result of a factual assessment’, EUIPO being required to
examine all evidence submitted in order to establish whether it actually proves
disclosure of the earlier design” (para 87) and that “the disclosure of
an earlier design cannot be considered to be a well-known fact which is not
required to be demonstrated, even in the event that the products in which that design
is incorporated or to which it applies would have been present on the market
for a long time and would be generally known to the public” (para 88).
Comment
The original patent on the Lego brick expired a
long time ago. Since then, Lego has been trying to find other means of
protection for its brick, whether as trade mark, design or copyright. In the meantime
many competitors have entered the market with their “bricks” that perfectly
combine with Lego’s bricks. In this context, Lego filed design registrations
related to modular systems composed by its bricks.
As set out in the EU Design Directive, the basic idea behind Article 8(1)
of the Regulation is to prevent technological innovation from being hampered by
design protection. Such innovations should instead be protected by patents,
which are time-limited and subject to prior substantive examination. Additionally,
it specifies that the design must not consist of features whose “exact form
and dimensions” are required for the product “to be mechanically
connected to or placed in, around or against another product so that either
product may perform its function” according to Article 8(2) of the
Regulation. This allows free competition on products which fit to other
products.
However, the situation becomes a little more
complicated when we consider modular products that can be assembled in
different ways. An important aspect of the design of such products naturally
relates to how they can be fitted together. Therefore, Article 8(3) of the
Regulation states that the design must consist of a “design intended to
enable the assembly or connection of multiple compatible products within a
modular system“. During these years of disputes, the application of
this provision to the modular systems by Lego has been dubbed the “Lego
exception”.
Even if the present decision of the GC can be
appealed to the Court of Justice of the European Union, it appears that the “Lego
exception” will continue to serve as a good example, and it will be interesting
to see what other modular systems will also be covered or considered to fall
within its scope.
From a broader perspective, this decision also
seems consistent with the objective set out in Article 8(3) of the Regulation because,
indeed, it looks reasonable and justified that the designers of intelligent and
complex interconnected systems should be rewarded fairly.
On a final note, the present decision confirms
that the burden of proof of invalidity of a registered design (lack of novelty
and of individual character) lies with the applicant for invalidity and it
cannot be “reversed” on the owner of the design or to EUIPO at the time of the
application for design registration, thus confirming a certain presumption of
validity of registered designs. A further clarification is then brought by the
GC on the quality of evidence of prior disclosure, especially with regard to
possible prior products displayed on websites (an issue often debated in
proceedings). The GC stress that a mere “link” to a website is not sufficient,
but that at least prints or screenshots of said websites are necessary, without
prejudice to the burden of proof related to the exact date of the prior
disclosure and its extent to the relevant public, so to allow a “factual
assessment” in the event that the products incorporating the design have been present and well known to the public
from a long time, as are the Lego’s bricks.
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