Lego builds on success and secures confirmation of EU brick design validity

One of the most recognisable toys in history has had the stamp of approval by the Court of Justice of the European Union (CJEU) over its registered design.

Lego has been locked in a dispute over the validity of the registered design secured for the brick toy in the EU. The challenge stemmed from German manufacturer Delta Sport Handelskontor’s application which claimed that the registered design was invalid as the features of the brick were solely related to its technical function and therefore were not original.

The case was initially heard by the EU Intellectual Property Office who sided with Delta Sport and argued that the registered design should be annulled back on the technical function argument in 2019.

This decision was appealed and overturned by the General Court in Lego’s favour. This was on the basis of a specific exception in EU law regarding modular systems under Article 8 of Regulation No 6/2002.

Article 8 states that no design shall be registered if the design is dictated by their technical function. However, Article 8(3) states that a registered design shall subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.

The EUIPO, following this decision, then reinstated Lego’s registered design.

The matter was appealed further by Delta to the CJEU. This appeal was on the basis that the smooth surface of the brick design was purely due to its technical function and therefore this was sufficient for the exception in Article 8(3) to not apply.

The CJEU disagreed with Delta and backed Lego. The court considered both sides and determined that Delta had failed to evidence that the design did not have new and individual character. The design therefore remains valid and Delta were ordered to pay Lego’s costs.

This is an important decision as there has been a number of question marks over the validity of 3D designs.

If you would like to discuss how to protect your marks in the EU, please do not hesitate to get in touch with the team.