The EU’s General Court in Lego A/S v EUIPO (Case T‑515/19) has provided an insight into the interplay between the ability to protect the interconnections of modular systems and the inability to obtain protection for features solely dictated by technical function.
The contested design
The contested registered Community design depicted a building block from a toy building set with a line of four studs down the middle. The studs are sized so as to fit into the underside of another block in a manner familiar to any fans of Lego.
Following an application for a declaration of invalidity, the design was considered valid by the EUIPO’s Cancellation Division. On appeal this decision was annulled; the EUIPO’s Board of Appeal concluded that the design was invalid. This decision was appealed to the EU’s General Court.
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Solely dictated by technical function
The Board of Appeal had declared that the registration was invalid for being a design that was solely dictated by technical function. The technical function exclusion was clarified by the EU’s Court of Justice in the case of DOCERAM (Case C-395/16). In short, for features of a design to fall foul of this requirement it must be shown that technical function is the only factor which determined the form of those features. Considerations relating to visual aspects should not have played a role in the designer’s choice. This assessment is made from an objective standpoint.
For the present design, the Board of Appeal considered (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) the two rows of bigger circles on the lower face of the brick; (iv) the rectangular shape of the brick; (v) the thickness of the walls of the brick; and (vi) the cylindrical shape of the studs. The Board of Appeal concluded that all of these features were solely dictated by the function of allowing the assembly and disassembly from other bricks. On this basis it decided the whole design was solely dictated by technical function and thus invalid.
The General Court highlighted that the six features considered by the Board of Appeal were not an exhaustive list of all of the features of the design. In particular, the smooth surface on either side of the studs on the upper surface of the brick had not been considered by the Board of Appeal when making its assessment. Therefore, the Board was not able to conclude that the whole design was solely dictated by technical function. This aspect of the decision was annulled by the General Court.
In addition to the technical function exclusion, the Community design regulation provides that a design cannot be based on features relating to interconnections. In the words of the Community design regulation, interconnections are “features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function”.
This exclusion for interconnections is caveated by allowing protection for “a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system”. This ‘defence’ is intended to allow protection for the interconnections of modular products. Lego was arguing that this defence was relevant for the toy brick. However, this defence was not taken into consideration by the Board of Appeal in its contested decision.
In concluding that the Board of Appeal erred by not taking this defence into consideration, the General Court considered whether a design that was solely dictated by technical function could be rescued by this defence. This is despite the defence only explicitly referring to the interconnections exclusion in the regulations and not the technical function exclusion.
Firstly, it was acknowledged that there is overlap between the exclusion relating to technical function and the exclusion relating to interconnections. It was also pointed out that it is possible for an interconnection to have a form that was conceived with visual considerations. Such an interconnection would not fall under the exclusion of being solely dictated by technical function. Therefore, the exclusion of interconnections excluded a broader range of interconnections than the technical function exclusion.
With this in mind, the General Court concluded that the defence for protecting modular systems must be effective regardless of whether an interconnection fell only within the interconnection exclusion, or it also fell within the technical function exclusion.
Therefore, even if an interconnection should be excluded for being solely dictated by technical function, it is still possible to obtain protection for it where it fulfils the defence of being an interconnection for modular products.
The General Court has demonstrated the possibility of obtaining protection for interconnections of modular products regardless of their form being solely dictated by technical function. This confirms the general availability of this defence and the General Court’s desire to keep design protection available for modular products. This is in line with recital 11 of the Community design regulation that states “The mechanical fittings of modular products may nevertheless constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection”. We will have to await further clarification as to whether Lego’s toy bricks are considered to fall within the defence by being “mutually interchangeable products within a modular system”.
In relation to the technical function exclusion, when seeking to invalidate a whole design, every single feature of the design needs to be solely dictated by technical function. The likelihood that one feature will have some aesthetic considerations, means that being able to knock-out a whole design (rather than just particular features) for being solely dictated by technical function will be a relatively rare occurrence.