[Guest Post] Battle of the Bricks – AG Szpunar’s Opinion in Lego (C‑211/24) in Light of Nokia (C-316/05)

The IPKat has received and is pleased to host the following guest post by Katfriend Peter Teunissen (Assistant Professor of IP Law, Radboud University), commenting on the Advocate General’s opinion in the latest reference for a preliminary ruling on Lego’s design case. Here is what Peter writes:

On 6 March 2025, Advocate General (AG) Szpunar delivered his Opinion in Case C‑211/24, Lego A/S v Pozitív Energiaforrás Kft. The case concerns the so-called “Lego exception”, named after the modular system that consists of mutually interchangeable toy building blocks. The system was developed in the 1950s, with a patent filed in Denmark in 1958.

While these patents have long expired, Lego has continued to seek protection for its modular design through other legal avenues, including trade mark law (see C-48/09, IPKat here) and even copyright. These efforts have largely been unsuccessful, mostly due to the exclusion of technical features under such regimes.

The Community Design Regulation (CDR) takes a similar approach. It protects only the appearance of a product (Article 3(a) CDR) and does not confer rights over characteristics of the appearance of a product which are exclusively imposed by its technical function (Article 8(1) CDR). However, this exclusion does not apply to designs covering products which form part of a modular system, despite their possible features of interconnection (Article 8(3) CDR). It is on this basis that Lego can still claim protection for its modular elements (see e.g. Lego v Delta Sport, T-537/22).

In the present case, AG Szpúnar discusses several aspects of this exception in the context of two Community designs relating to two coupling components of a toy building set. In his Opinion, the AG provides an in-depth analysis based on the first question referred to by the Budapest High Court, which relates to the notion of the informed user and the overall impression produced on this user by the design, under Article 8(3) CDR. 

These considerations will not be explored further here. Instead, this analysis focuses on the second question referred by the High Court: 

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” [sic] for the purposes of Article 89(1) of the [r]egulation?

However, the AG declined to answer the question, stating in point 15:

In accordance with the Court’s wishes, I shall limit this Opinion to an analysis of the first question. The answer to the second question can easily be inferred from the settled case-law.

The AG cites the Court of Justice (ECJ) rulings in Nikolajeva (C‑280/15, at paras. 33-34) and Nokia (C-316/05, at para. 35) to substantiate this limitation. However, it is unclear how these judgments could provide a conclusive answer to the question at hand. At its core, the question concerns whether, and to what extent, courts must consider the seriousness of the infringement when granting injunctions, and whether injunctive relief may be limited by applying the principle of proportionality (see Recital 17 and Article 3(2) IPRED).

The rulings discussed above do not provide a conclusive answer to these questions. They merely clarify that an injunction should be issued when there are no doubts regarding the validity of the right or the likelihood of infringement and that the term “special reason” in Article 102(1) CTMR [and also Articles 130 EUTMR and 89(1) CDR] relates only to exceptional situations.

The fact that an injunction should in principle be granted does not preclude the existence of circumstances that justify limiting or tailoring relief. Indeed, it follows from ECJ case law that remedies must be “commensurate with the seriousness of the infringement, while respecting the general principle of proportionality” (see e.g. Texdata, C-418/11, at para. 51; G.ST. T., C-655/21, at para. 65, IPKat here).

This raises the question whether, and to what extent, an injunction that also affects non-infringing elements can be justified under these requirements. This is particularly relevant in the context of multi-component products, such as cars or smartphones, where the infringement often relates to a relatively minor part of the overall product While it may be argued that harm resulting from the removal of such a component should generally be borne by the infringer, this does not detract from the fact that it may be technically impossible or economically prohibitive to remove or replace the infringing element directly.

In the present case, the fact that elements can easily be removed or replaced could imply that there is no reason to limit injunctive relief (as argued here and here). However, such possibilities may not always exist. Therefore, it is important to clarify under what circumstances courts may limit injunctive relief.

This is clearly not a settled matter, as evidenced by the extensive discussions on this topic in patent law literature (see especially Dijkman, here and discussed here), and the much-discussed introduction of a proportionality test in German patent law (here). The present case illustrates that the issue is by no means limited to patent law.

It can be deduced from the ECJ’s refusal to seek advice that it will not provide detailed considerations on this matter. As a result, the conditions and modalities for limiting injunctive relief remain unclear. This is all the more unfortunate as both national courts and the UPC are increasingly confronted with appeals to proportionality. Guidance from the Court could enhance legal certainty and reduce the risk of divergent national decisions. Hopefully, the topic will be given more serious consideration in future cases.