[Guest post] Thou shalt not discriminate the Lego block over any other kind of product – GRUR speaks out on C-211/24

The IPKat has received and is pleased to host the following guest contribution by Katfriend Henning Hartwig (Bardehle Pagenberg; Chair of the Committee for Design Law of the German Association for the Protection of Intellectual Property) on the comments the GRUR Committee for Design Law submitted on the request made by the Fővárosi Törvényszék, Hungary, for a preliminary ruling by the CJEU presenting questions for the interpretation of provisions of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs.  Here’s what Henning writes:

 

Thou shalt not discriminate the Lego block over any other kind of product – GRUR speaks out on C-211/24

by Henning Hartwig

The German Association for the Protection of Intellectual Property (GRUR), established in 1891, is a recognized non-profit scientific association of members of all professional groups and organizations active in the field of intellectual property law. Its Committee for Design Law (GRUR Committee) is made up of design law experts from academia, the judiciary, the legal profession as well as from industry, and notoriously active in submitting comments on requests submitted by national design infringement courts for a preliminary ruling under Article 267 of the Treaty on the Functioning of the European Union (TFEU) (see, for instance, here, here and here).

Background

The GRUR Committee has analysed the request made by the Fővárosi Törvényszék, Hungary (the Referring Court), for a preliminary ruling by the Court of Justice of the European Union (CJEU) presenting questions for the interpretation of provisions of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (CDR), and specifically provisions in Articles 10 and 89 CDR. The helpful Summary of the request for a preliminary ruling pursuant to Article 98 (1) of the Rules of Procedure of the Court of Justice can be found here.

Overall, the GRUR Committee considers that the referring Court has misinterpreted established requirements and standards for finding design infringement under EU law and practice. Also, the questions referred to the CJEU have been already answered by the CJEU, at least to a large extent.

It appears to the GRUR Committee that the referring Court has not taken into account pertinent case law but, rather, proceeds from a “clean slate”. For example, the referring Court, in the first question, submits that a design may be “protected” under Article 8 (3) CDR, whereas Article 8 (3) CDR is merely a corrective to Article 8 (2) CDR, which serves as an obstacle to protection.

Referral to the CJEU

The Referring Court referred the case to the CJEU posing two questions, with the first question being divided into three sub-questions.

The first question is as follows:

In a case such as that in the main proceedings, in which the holder relies on a design protected under Article 8 (3) CDR in connection with one or more building blocks from a toy building set made by the defendant which perform the same assembly function as the blocks in the applicant’s design, is it compatible with EU law for the courts, when determining the scope of protection, within the meaning of Article 10 CDR, of the applicant’s design,

• to take as their point of reference an informed user who, in respect of the function of the design and that of the product, possesses the technical knowledge to be expected of a sectoral expert,

• to consider an informed user to be one who compares the applicant’s design and the defendant’s product by carrying out a thorough, technical, and methodical examination, and 

• to assume that the informed user’s overall impression of the design and of the product is formed primarily of a technical opinion?

The second question is as follows:

In the event that, in a case as described above, it is to be concluded that the protection conferred by the applicant’s design extends to one or a small number of pieces of the defendant’s toy building sets, the number of which is nonetheless small in relation to the total number of building blocks, is it compatible with EU law for a court to have discretion to dismiss the claim for a prohibition on the continued importation of the toy building set into the country, after taking into consideration the partial nature of the infringement, the limited severity and extent of the infringement in relation to the product as a whole, and the interests associated with the unrestricted trade in a toy building set which is for the most part uncontested, those being classified as ‘sound reasons’ for the purposes of Article 89 (1) CDR?

 

Lego Grumpy Cat

First Question

The first question seeks an interpretation of Article 10 (1) CDR and specifically asks whether the “informed user” in judging the individual character of a design qualifying for protection under Article 8 (3) CDR must be a person having technical expertise regarding the products at issue.

The GRUR Committee considers that the “informed user” must be determined under established case law and that there is no reason to establish different criteria when infringement of a design protected under Article 8 (3) CDR is at issue.

Therefore, the first question raised by the Referring Court should be answered as follows:

"In a case in which the holder relies on the exception under Article 8 (3) CDR, when determining the scope of protection under Article 10 (1) CDR, the informed user does not possess, in respect of the function of the design and that of the product, the technical knowledge to be expected of a sectoral expert. Furthermore, the informed user does not compare the claimed design and the accused product by carrying out a thorough, technical, and methodical examination. Finally, the informed user’s overall impression produced by the claimed design and the accused product, within the meaning of Article 10 (1) CDR, is not primarily formed of a technical opinion."

Second Question

The second question seeks an interpretation of Article 89 (1) CDR. In the opinion of the Referring Court a prohibition of use in the present case could be disproportionate in view of the fact that the infringing building blocks in the sets of the defendant constitute only a small part of the total elements of these sets.

The GRUR Committee is of the opinion that in view of the case law of the CJEU a refusal of injunctive relief should be considered only if the likelihood of continuing infringement is essentially non-existent, such as when the defendant issues a cease-and desist declaration subject to a penalty, but that there is no basis to accept continuing infringements under a de minimis rule, when, as in the present case, the infringing situation could easily be avoided by removing the infringing elements from the sets of the defendant.

In conclusion, the second question raised by the Referring Court should be answered as follows:

"In an action for infringement or for threatened infringement, where a Community design court finds that the defendant has infringed or threatened to infringe a design, with the infringing products being part of sets of products including other non-infringing products and amounting to a small number of pieces of products, the number of which being small in relation to the total number of products, the court shall order the measures provided under Article 89 (1) CDR, including ordering the prohibition of continuing the infringing activity, unless there are “special reasons” for not doing so, which it is for the Community design court to assess, having regard to the circum-stances of the case before it and taking into consideration in particular the principles of proportionality and effectiveness. The Community design court may limit the corrective measures under Article 89 (1) CDR to the infringing pieces, such as by ordering their removal, without limiting the distribution of the products not including infringing pieces."

The complete submission of the GRUR Committee can be found here and here.