[Guest post] The Lego Case T-515/19: A building block castle built up on sand

The IPKat is pleased to host the following analysis by Vincenzo Vinciguerra (Weblegal and Cattolica University) on the recent design decision of the General Court in Lego, T-515/19.

Here's what Vincenzo writes:

The Lego Case T-515/19: A building block castle built up on sand

by Vincenzo Vinciguerra

In Lego A/S v EUIPO (T-515/19), the General Court (“GC”) considered the scope of protection of a design, consisting of the representation of a building-block that is part of a larger Lego building set.

The implications of the present judgment may change the paradigm of design protection in the EU since it considerably enlarges the scope of protection granted to modular systems.

This author is not inclined to opine on whether greater or lesser protection for modular systems is preferable, but he disagrees with the argumentative path by which the GC reasons in its judgment.

The following analysis sets out that, with the purpose of broadening the scope of protection of modular systems, the GC misconstrued Art. 8 of Regulation No 6/2002 on Community designs (“CDR”).

Background

The case originated with an application for a declaration of invalidity concerning a Community design which was filed by Lego on February 2, 2010 and registered for “building blocks for a toy building set” (the “Contested Design”), as per the following picture:

The EUIPO Cancellation Division rejected the claim concerning the invalidity of the design. However, the EUIPO Third Board of Appeal (“BoA''), before which the Cancellation Division's decision had been appealed, declared the Contested Design invalid (the “Contested Decision”). In particular, the BoA considered that Art. 8(1) CDR would apply to the case at hand, since all the features of appearance of the Contested Design were solely dictated by the technical function of the product, i.e. to allow assembly with, and disassembly from, the rest of the bricks of the set. Therefore, the Contested Design could not have been granted protection.

The BoA’s decision was subsequently appealed to the GC which considered, among other things, that the BoA had erred in law in accepting the claim of invalidity of the Contested Design, since it had failed to assess whether the Contested Design met the requirements of Art. 8(3) CDR. The BoA, for its part, reasoned that Art. 8(1) CDR (which it found applicable to the Contested Design) would have prevented Lego from relying on the exception set in Art. 8(3) (see §§ 23 – 26).

This said, the GC carried out its analysis by assessing which rule was applicable to the Contested Design: the one set in Art. 8(1), or Art. 8(2), respectively. Ultimately, the GC considered that both provisions applied to the Contested Design, with relevant consequences in law that are addressed below.

Analysis

Before considering the arguments that led the GC to such conclusion, it is also important to review the legal backdrop of the decision.

According to Art 8(1) of the CDR “A Community design shall not subsist in features of appearance of a product which are solely dictated by its technical function.”

That provision, in light of the latest interpretation given by the CJEU, “excludes protection under the law on Community designs for features of appearance of a product, where considerations other than the need for that product to fulfil its technical function, in particular those related to the visual aspect, have not played any role in the choice of those features, even if other designs fulfilling the same function exist” (Doceram GmbH v CeramTec GmbH, C-395/16, EU:C:2018:172, § 31).

Art 8.1 CDR intends to avoid that technological innovation could be hampered by granting design protection to features which are essential to do whatever the product must do, as Recital 10 CDR states.

Art. 8(2) CDR specifies and further defines the rule set in Art. 8(1), providing that interconnection products (characterized by “must-fit features”) are not eligible for protection. As is well known, this rule is intended to promote interoperability of parts, as Recital 10 of CDR states.

Finally, the third and last paragraph of Art.8 CDR lay down the exception to the rule set in Art. 8(2) (“Notwithstanding paragraph 2 ….”) providing that design of interconnections can be protected where they form a modular system.

Against this legal background the GC ruled – in a nutshell – that the exception referred to in Art. 8(3) CDR applies to both Arts. 8(1) and 8(2) (when certain particular conditions are met).

That outcome was reached through the following reasoning:

• where the features of appearance of a product are dictated only by technical functions and where consideration regarding the visual aspects plays no relevance, then Art. 8(1) CDR applies and thus the product cannot be protected;
• where – as it happens with the Contested Design - the features of appearance of a product have been solely dictated by technical reasons and, furthermore, that product must be reproduced in the exact dimension in order to permit its connections with other products, then Art. 8(2) CDR also applies;
• Art. 8(2) CDR encompasses products whose features of appearance are not solely dictated by technical function but are also influenced by consideration related to visual aspects. It is indeed true, as the GC states, that if all features of interconnection were solely dictated by a technical function, there would have been no need for the legislature to introduce Art. 8(2), because Art. 8(1) would have sufficed to cover those cases;
• therefore, according to the GC, certain products – namely: those products whose features of appearance concerned by a design (i) permits the connection of that product to another product for which (ii) those functions are the only factor which determines their appearance – may fall within the scope of both Art. 8(1) (with regard to the features of the product that are solely dictated by technical function) and within Art. 8(2) (with regard to the features of a product of interconnection where also the visual appearance has played a role in the choice of those features of interconnection). The GC reasoned that the latter was applicable to the Contested Design, in light of the factual findings of the BoA concerning the features of appearance of the building blocks that Lego intended to register as a design.

Given this premise, it would follow that the exception provided in Art. 8(3) applies not only to features of a product concerned by design within Art. 8(2), but also to those features of product concerned by design that would simultaneously fall – according to the reasoning of the GC – within Arts. 8(1) and 8(2).

In turn, this means that, if the features of a product concerned by design are solely dictated by its technical function (as provided by Art. 8(1)), that would not per se negate application of the exception referred to within Art. 8(3) (as, instead, the BoA had done), in so far as that product is also characterized by features of interconnection dictated also by consideration related to its visual aspects.

It then becomes clear that, by means of this construction, the scope of the exception within Art. 8(3) has been considerably broadened by the GC.

However, it appears that the reasoning of the GC does not hold up from a systematic point of view.

Which looks the happiest?

On the one hand, features of appearance of the product concerned by a design that permit the connection of that product to another product fall solely within Art. 8(1), when that function is the only factor which determines its appearance. That is so because Art. 8(1) encompasses every kind of features of a product that is dictated solely by technical functions; therefore, it must logically also comprise those features that serve to permit interconnections among products, since those features perform exactly a function … of interconnection. In other words, the more (Art. 8(1)) contains the less (Art. 8(2)).

On the other hand, Art. 8(2) applies only if two requirements are met, namely where: (i) features of appearance serve the function of interconnection, and (ii) those features of interconnection are dictated not only by the need for that product to fulfil its technical function but also by aesthetic consideration.

It follows from the above that the features of a product concerned by design may fall logically only either within Art. 8(1) or Art. 8(2), depending on the characteristic of the feature of appearance of the product concerned by design, not within both of them.

Therefore, if features of the product are solely dictated by a technical function, then only Art. 8(1) applies. In present case, any further assessment should be prohibited because Art. 8(1) sets up a barrier which could not be overcome, absent any rules to the contrary. Holding otherwise, as the GC does, represents, in the opinion of this author, a (disruptive) escamotage in order to have the Contested Design (and, therefore features of appearance that are solely dictated by their technical function) benefit from the exception set out under Art. 8(3).

In other words, in the GC’s construction, the concocted concurrent application of both Arts. 8(1) and 8(2) serves the purpose, in the view of this author, to use Art. 8(2) as a “trojan horse” to have cases falling within Art. 8(1) to benefit from the exception set in Art. 8(3).

The GC justifies its findings by stating (among other thigs) that, reasoning otherwise would not ultimately enable the objective set out in recital 11 of CDR, i.e., to incentivize the production and commercialization of modular systems.

However, it does not seem, at least prima facie, that applying the suggested interpretation would frustrate the fostering of modular products. Protection to modular systems will still be possible, but only where criteria provided by Arts. 8(2) and 8(3) are rightfully met. We should bear in mind that Art. 8(3) is an exception to the rule laid down in Art. 8(2) and thus, as is for any exception, that rule should be strictly interpreted.