[LEGO CASE]

[Trade mark - Design - Intellectual property - EU Treaty - EUIPO]

 🚨 The Brick Empire will not fall.

Since 2016, Delta Sport Handelskontor GmbH ("DELTA SPORT") has been trying to bring down the Empire of Lego A/S ("LEGO") by seeking the invalidation of a European design for a LEGO product, but to no avail. The Court of the European Union ("TEU") has had its say by dismissing his appeal in its entirety.

⚖️ On 8 December 2016, DELTA SPORT applied to the European Union Intellectual Property Office ("EUIPO") for a declaration of invalidity of LEGO's European design (No 1 664 368-0006 / date of application: 2 February 2010) in Class 21. 01 within the meaning of the Locarno Agreement of 8 October 1968, for "Building blocks for a construction toy box", on the basis of Articles 4, 8(1), 9 and 25(1)(b) of Regulation 6/2002 (‘Initial Application’). DELTA SPORT argued, inter alia, that all features of the appearance of the product concerned by the contested design were exclusively dictated by the technical function of the product and, as such, were excluded from protection.

On 30 October 2017, the Cancellation Division of the EUIPO issued a decision rejecting the Initial Application ("2017 Rejection Decision").

On 5 January 2018, DELTA SPORT filed an appeal against the 2017 Rejection Decision.

On April 10, 2019, the Third Board of Appeal of the EUIPO ruled in favour of DELTA SPORT ("Case R 31/2018-3" or "2019 Invalidity Decision") and declared the invalidity of LEGO's European Design No. 1 664 368-0006.

On 19 July 2019, LEGO filed an application with the EU Court seeking the annulment of the 2019 Invalidity Decision ("Case T-515/19").

On 24 March 2021, the EUAT annulled the 2019 Cancellation Decision ("2021 Cancellation Decision"). The TEU examined the technical function and appearance-related features of the contested product, considering Article 8(2) of Regulation 6/2002 on interconnection features and Article 8(3) providing an exception to Article 8(2) where the appearance-related features fall within both Article 8(1) and Article 8(2). The TEU considered it necessary to interpret all the provisions of Article 8 of Regulation 6/2002 in order to preserve their useful effect.

The Presidium of the Boards of Appeal of the EUIPO referred the case to the Third Board of Appeal of the EUIPO.

On 30 May 2022, the Third Board of Appeal of the EUIPO rejected DELTA SPORT's request for a declaration of invalidity (R 1524/2021-3).

DELTA SPORT sought the annulment of the decision of the Third Board of Appeal of the EUIPO of 30 May 2022 ("Contested Decision").

On 24 January 2024, the EUAT dismissed the appeal, ruling in favour of LEGO (T-537/22).

This latest decision refers to several elements, including the following :

- Article 8(1) of Regulation 6/2002: a design can only be declared invalid if at least one of the characteristics of the product concerned by a contested design is not exclusively imposed by the technical function of that product (§35).

- Article 8(2) of Regulation 6/2002: a design can only be declared invalid if all its features fulfil the conditions of Article 8(2) and none of them benefit from the exception protecting modular systems provided for by Article 8(3) (§47), i.e. if all its features are excluded from protection (§37, §40). Even if DELTA SPORT's argument were well-founded, it would have affected only one of the seven features of the contested design. The validity of the design as a whole could not be called into question on that basis (§39).

- Article 8(3) of Regulation 6/2002: the burden of proof regarding the lack of novelty and individual character of the contested design rests with the applicant for a declaration of invalidity invoking the failure to satisfy the requirements of Articles 5 and 6 of the Regulation (i.e. DELTA SPORT) with regard to the system of protection of European designs established by Regulation 6/2002 in a broad manner (§51). The procedure for registering European designs is subject to a formality (and not a substantive) review (§53-§54). It follows that the new and individual character of a European design is presumed during the registration procedure. This presumption can be rebutted, but it is only after registration that a design can be declared invalid on the basis of Article 25(1) of Regulation 6/2002 (§55). Furthermore, the presumption of validity of a design cannot depend on the ground for invalidity and must be applied consistently and indistinctly. The assessment of the novelty and individual character of a design must be made in relation to one or more specific, individualised, determined and identified designs from among all the designs disclosed to the public prior to the filing date of the design application for which protection is sought (§62-§63). Reversing the burden of proof would mean that the owner of the contested design would have to provide negative proof (e.g. the absence of disclosure of any design which could prevent his design from being considered as new or having an individual character), which would be impossible or particularly difficult (§65).

- Article 63(1) of Regulation 6/2002: The EUIPO examines the facts of its own motion. However, in the context of an invalidity action, the examination is limited to the arguments in law and the requests submitted by the parties (§85). In this case, the EUIPO was obliged to analyse only the elements presented in order to conclude whether they could in fact constitute evidence of disclosure of the prior design. Disclosure of a prior design must be based on concrete and objective evidence of actual disclosure on the market (§90) and cannot in itself constitute a well-known fact within the meaning of Article 63(1) of Regulation 6/2002 (§87).

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