27 September 2021
Brands Update – September 2021 – 4 of 4 Insights
In a recent decision, the EU General Court considered whether the shape of a Lego brick is validly registered as an EU Registered Community Design (RCD). The case potentially opens the door for the wider registration of "modular" shapes as RCDs.
The Board of Appeal at first instance had declared the registration invalid: all the visual characteristics of the design were functional in that they allowed the brick to be joined with other building blocks in a sufficiently stable manner to create a structure.
The General Court has now annulled this decision and referred the case back to the EUIPO. It did so for two reasons.
First, the Board of Appeal had not examined all the elements/features of appearance of the Lego brick for their technical function. In particular, the Board of Appeal had not considered the specific shape of the top of the Lego brick, with the four round knobs in the middle and flat surfaces adjoining both sides.
Second, there was an error of law in the Board of Appeal's decision for failure to examine the reverse exception for modular systems. The legal provisions concerning shapes with technical functions and modular shapes are contained in Article 8 of the Community Design Regulation:
In this respect, the General Court has now stated that there may be features of appearance of a product which fall under both Art. 8(1) and 8(2) and that the exception in Art. 8(3) applies where features fall under both Art. 8(1) and 8(2). This is so even though the wording of Art. 8(3) only refers to Art. 8(2). It therefore provides for a broad interpretation of the exception laid down in Art. 8(3) and for extensive protection of modular systems.
In this context, the ECJ's decision on the registrability of a Lego brick as a three-dimensional trade mark is interesting (ECJ GRUR 2010, 1008 - LEGO-Baustein). In the decision, the ECJ denied the Lego brick protection under trade mark law. The reasoning was that the LEGO brick consisted solely of features of the product which were necessary to achieve a technical result; trade mark law does not have an equivalent provision about modular shapes. By taking a different path in the present decision, the General Court has emphasised the independence of the assessment under design law compared to trade mark law.
The case is not binding on the UK Tribunals or Courts since it was decided after the end of the Brexit transition period. Whether the UK Courts will interpret the reverse exception for modular systems in the same way remains to be seen. For now, the ruling should mean that modular systems are easier to register as RCDs.
To discuss the issues raised in this article in more detail, please reach out to a member of our Brands & Advertising team.