ECJ - LEGO wins step by step, registered European design remains protectable
Judgment of the Court of Justice of the European Union (CFI) (Second Chamber) of March 24, 2021.
Lego A/S v. European Union Intellectual Property Office.
The judgment concerns European Design No. 1664368-0006.
It must be noted in a qualifying manner that the ECJ's decision is based on the fact that the EUIPO Board of Appeal erred in law in its invalidity decision. The EUIPO had failed to comprehensively examine the exceptions raised by LEGO in the proceedings. This decision is thus precisely not an explicit confirmation of the protectability of the registered design of the Lego brick.
The ECJ states in this regard:
Exceptionally, however, the mechanical connecting elements of combination parts may form an important element of the innovative features of combination parts and constitute an essential factor for marketing and should therefore be protectable.
In addition, the CFI complains that the Board of Appeal of the EUIPO did not sufficiently examine all features of the design applied for.
The court then states that a design must be declared invalid if all the features of its appearance are exclusively conditioned by the technical function of the product to which it relates, but that the design in question cannot be declared invalid if at least one of the features of appearance of the product covered by a contested design is not exclusively conditioned by the technical function of the product.
As a result, the eye-catching (and different from the classic Lego brick) smooth surface here, which contains the design to the left and right of the four-nobled row in the middle on the top, was not appreciated as a feature. Therefore, not all features of the design had been identified and included in the evaluation in order to make a decision on the purely technical function of the product, i.e. the design of the Lego brick.
The decision is not yet final and it is expected that the proceedings will go to the next round.
The full decision of the ECJ can be read here.