In the judgement of 24.01.2024, ref. T-537/22 of the European Court of Justice in the dispute over the design of a Lego building block, the validity of the Community design of a Lego building block was confirmed.
The rival company Delta Sports had already tried unsuccessfully in 2019 to have the protection of the design declared invalid before the European Union Intellectual Property Office (EUIPO). The case was then referred to the Boards of Appeal of the (EUIPO), which declared the design invalid on the grounds that all the features of the stone were exclusively due to its technical shape. The Board of Appeal referred to the principle of “form follows function”. It argued that designs in which all features serve exclusively technical functions cannot be protected in principle.
Lego brought an action against this decision before the European Court of Justice and was upheld in 2021. The EUIPO’s decision was overturned with the argument that the Lego brick was part of a modular system and that it was therefore an exceptional provision that protects designs of connecting elements in modular systems.
A further appeal by Delta Sports was dismissed by the European Court of Justice. The decision may be seen as a groundbreaking addition to case law that strengthens the position of design owners on the market. Particularly significant is the finding that it is precisely the uselessness of a design element that may justify protection of the entire design, as a design is only not worthy of protection due to its function as a connecting element if all features serve the purpose. Furthermore, it was reiterated that the burden of proof in an invalidity application lies with the applicant if it is claimed that the protection of modular systems should be denied due to a lack of novelty and individual character.
This shows once again how valuable design protection may be. Our experts will be happy to advise you in detail on the individual possibilities and opportunities for your design protection.