The ruling in favor of the Danish toy manufacturer is hailed as “excellent news” for creators of functional products.
The Court of Justice of the European Union (CJEU) has affirmed the Lego toy brick’s standing as a registered Community design, a ruling celebrated as “fantastic news for design rights holders and creators of functional products”.
In a verdict issued on 24th January, the General Court of the CJEU determined that the iconic toy brick meets the criteria of a design, notwithstanding certain aspects of its design being influenced by technical function.
By dismissing a challenge brought by rival German toy company Delta Sport Handelskontor against the protection granted to the toy brick since 2010, the court cited the benefits of Article 8(3) of the Community Design Regulation (CDR).
Article 8(3), often referred to as ‘the Lego Exemption’, accommodates “the multiple assembly or connection of mutually interchangeable products within a modular system,” permitting products displaying “novelty” and “individual character” to be safeguarded.
The ruling highlighted that a design can only be deemed invalid “if all of its features are ineligible for protection.” Furthermore, it stated: “If at least one of its features is protected, particularly as a result of the exception outlined in Article 8(3) of the regulation, the design retains its validity.”
A statement released by the General Court of the CJEU conveyed that Delta Sport was responsible for providing evidence and had not succeeded in demonstrating that the toy brick lacked the “novelty and individual character” necessary to qualify for the exception safeguarding modular systems.
Richard May, a partner within Osborne Clarke’s intellectual property division, characterized the verdict as “positive news for holders of design rights and functional products”.
“It appropriately establishes a stringent standard for challenges grounded in technical function and underscores the challenge of invalidating registered designs,” he remarked.
The General Court was addressing a judgment made in 2021 by the EU Intellectual Property Office (EUIPO), affirming the legitimacy of the Lego brick’s registered Community design.
Initially, Delta Sport managed to invalidate the brick’s protection in 2019, when the EUIPO deemed all of the Lego brick’s appearance features as solely dictated by its technical function, rendering it ineligible for design protection.
However, in 2021, the EUIPO determined that revoking protection for the Lego brick was inappropriate since the brick fell under a specific exception outlined in EU legislation.
May emphasized that the court clarified that a design must be “100% functional to be invalidated,” stressing that this case highlights the importance for designers of functional products not to dismiss design registration automatically. He elaborated: “As long as the products incorporate some aesthetic features, that should suffice to provide robust registered protection.”
He further noted that the case exemplifies the difficulty of invalidating even seemingly ordinary designs without prior art that nullifies novelty.
Christoph Moeller, a partner at Mewburn Ellis, remarked that the judgment also offers insight into distinguishing between products intended for “integration or connection to other products during assembly or retrofitting” and those designed for continuous assembly and disassembly throughout their lifecycle, such as Lego.
He further remarked that the ruling underscored that the responsibility to prove the absence of novelty and individual character in a design rests with the party seeking a declaration of invalidity, rather than with the holder of the design right. He stated that adherence to the prerequisites of a Community design—namely, novelty and individual character—is “presumed until proven otherwise.”
