We have previously reported on the General Court’s judgment in Lego A/S v EUIPO, where the General Court annulled the Board of Appeal’s decision to invalidate Lego’s registered Community design protecting a new form of Lego brick.

The Board had originally decided that the registration of the brick was not valid as its appearance was “solely dictated by technical function”.  In annulling this original decision, the General Court stated that the Board erred when it did not consider whether the flat surfaces either side of the studs were solely dictated by technical function. Also, the General Court stated that the Board should have considered whether Lego’s registration could benefit from the exception that allows a Community design to subsist when it is part of a modular system.

The Board of Appeal has now reassessed Lego’s registration in its recent decision taking account of the General Court’s judgment.

Solely dictated by technical function

Following additional arguments from both parties, the Board was convinced that the smooth surfaces either side of the studs were solely dictated by technical function.  In reaching this conclusion, the Board took account of several Lego construction sets that required the presence of the smooth surfaces so that the brick could interconnect with other Lego components. Also, the Board noted that the lack of studs allowed greater flexibility when connecting the bricks together as well as allowing Lego figures to be positioned at different angles.

Lego argued that the brick was originally designed as a standing plate for displaying Lego figures and so the smooth surfaces were present for aesthetic reasons. However, the Board considered this to be a “subjective” reason that could not change its view of the “objective” circumstances that indicate that the smooth surfaces were solely dictated by technical function – the correct assessment was required to be an objective one in line with the judgment in DOCERAM C-395/16.

Therefore, the Board maintained its original view that the Lego brick’s appearance was solely dictated by technical function.

Modular system exception

Usually, a conclusion that a registered Community design’s appearance is solely dictated by technical function would result in the invalidation of the design.  But in line with the General Court’s judgment, the Board had to consider whether the design served “the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system”.

If so, then the design benefited from the modular systems exception and could not be invalidated for being solely dictated by technical function. The Board noted that “LEGO bricks are probably the best-known example of such a modular system” and so had no hesitation concluding that the exception applied to Lego’s design registration.

The Board also noted that the exception still requires the design to fulfil the requirements of novelty and individual character. In this case there was no convincing evidence provided that showed these requirements were not fulfilled.

Overall, the application for a declaration of invalidity was therefore rejected.

Summary

This decision demonstrates the power of the modular system exception to save a design from invalidation when it is considered to have an appearance that is solely dictated by technical function.  It is in line with one of the aims of the EU’s registered design system, which is to provide protection for innovative characteristics of modular products.  Since Lego is the quintessential modular system, the conclusion is not particularly surprising in this case, but it will be interesting to see what other products try and make use of the modular system exception.