Design protection of a LEGO brick: Assessment of validity must be based on all features of appearance of the product
Everybody knows LEGO. However, most do not know that LEGO has been fighting for their intellectual property protection for many years now. Recently, the Danish toy production company achieved a surprising victory at EU level before the General Court
In 2019, the protectability of the following building block was refused by the EUIPO Board of Appeal:
The Third Board of Appeal of EUIPO declared the invalidity of the design of a specific LEGO brick on the ground that all features of appearance of the product (e.g. the rectangular shape of the brick or the cylindrical shape of the studs) were solely dictated by the technical function of the product (i.e., the capability of being assembled with and disassembled from the rest of the bricks of the set). This circumstance is sufficient ground for refusal of protection under EU design law.
However, the General Court annulled the decision: According to the Court, the Board of Appeal made several mistakes. Among others, they did not consider all features of appearance of the product. They did not take into account the smooth surface on either side of the brick which might not be aimed at the technical function and could instead represent a creative aspect. The Court emphasized that if at least one of the features of appearance of the product is not solely dictated by the technical function, the design cannot be declared invalid.
This is a (temporary) victory for LEGO. An appeal (based on legal grounds only) can still be brought before the Court of Justice of the European Union. We will have to see whether the brick shown above will be considered as creative enough by the Courts for LEGO to maintain the intellectual property protection for one of their building blocks.