The European IP authority, EUIPO, had wrongly declared invalid a design of one of the building bricks of LEGO’s toy building sets. LEGO’s design protection is therefore upheld.

LEGO has just won a case by the EU Court concerning design protection of one of its building bricks. The case goes back to 2010. LEGO had obtained design protection of one of its building bricks with the European Union Intellectual Property Office, EUIPO. The protection means that LEGO is protected against other companies copying the brick.

In the case, the German company Delta Sport Handelskontor filed an invalidity claim against LEGO’s design protection. Delta Sport manufactures and sells toys amongst other products. In 2019, EUIPO concluded that the design was invalid, the reason being that all the elements of LEGO’s brick design were found to be dictated by the product’s technical function.

The brick looks like this:

Generally, according to the Regulation on Community Designs Article 8(1), a design cannot as a main rule be protected if the design is dictated by a product’s technical function. The rationale for this exclusion of design protection is that solely technical features of a design should be protected via patents rather than design law. In the assessment the authority will, among others, examine i) the reasons which dictated the choice of the product’s features, and ii) the existence of alternative designs which fulfil the same technical function.

There exists, however, an extraordinary exemption to the exclusion of design protection whereby design protection can be obtained or upheld. In the case at hand, the Court found that the EUIPO had a duty to examine the relevance of this exception’s application in the case. The EUIPO had failed by not examining the relevance of the exemption. The EUIPO had also failed to take into consideration all the features of the brick’s appearance. The EU Court therefore found that the EUIPO had “erred in law”, and thus made a mistake when rendering its decision. LEGO’s design protection of the building brick in its toy set therefore remains valid.

LEGO has been in many legal battles before concerning trademarks and design. In 2015 LEGO e.g. won a case which prevents other companies from copying its iconic LEGO toy man.

aera always recommends that you on a regular basis review your design and trademark protection and strategy. Please feel free to contact us, should you have any questions relating to your IP protection, hereunder regarding your trademarks and design.

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This news article is meant for general information and discussion only. It is not a full analysis of the matters presented, and shall not be regarded as or relied upon as legal advice.