Designs & Copyright
Posted on 14/4/2021

European court ruling re-affirms design protection for LEGO brick

A decision taken by the EUIPO invalidating a RCD has been overturned.

The EU General Court has overturned an earlier decision by the EUIPO invalidating a registered community design (RCD) filed by the toy making giant.

Whilst LEGO bricks have been around in their modern form since the 1950s, the Danish company sought protection for a relative newcomer to the range being introduced in 2010.  On first inspection the brick in question appears relatively unassuming, being a 4×3 plate with a single row of 4 studs arranged across the middle of the upper surface.  It is however found in over 600 hundred sets, including as the stand for the entire minifigure collection, a valid RCD for this part therefore helps to protect a large number of different products within the LEGO range.

An application for a declaration of invalidity against the RCD was filed by Delta Sport Handelskontor, citing that all the features of the design were determined by the technical function of the brick.

In the EUIPO Board of Appeal’s original decision to invalidate the RCD, the board identified a number of features of appearance for the brick:

  • The row of studs on the upper face of the brick;
  • The row of smaller circles on the lower face of the brick;
  • The two rows of bigger circles on the lower surface of the brick;
  • The rectangular shape of the brick;
  • The thickness of the walls of the brick;
  • The cylindrical shape of the studs.

The board stated that all features of the appearance of the product were solely dictated by their technical function, namely as a building brick designed to be assembled with the rest of the bricks in the set, and as such declared the RCD invalid.

LEGO chose to contest this decision and took the case to the EU General Court. LEGO contended that a key aspect of the appearance was missing from the list; specifically, the smooth surfaces to either side of the upper row of studs. This they said was not dictated by a technical function, but was a creative decision and as such the decision to invalidate the RCD should be annulled.

The EUIPO responded that this too was a technical feature as it allows two bricks to be twisted when connected by a single stud at the end of the row, thereby allowing a bend to be built.

The General Court did not find the EUIPO’s argument persuasive and found in favour of LEGO, agreeing that the smooth surfaces were indeed a feature of appearance of the product and as such eligible for design protection. The court therefore annulled the invalidity decision.

This may not be the end of the story as Delta Sport, who originally filed the invalidity application, have the opportunity to appeal the decision to the highest European court, the European Court of Justice.

In the meantime, LEGO has successfully defended the protection of their design, and assuming they choose to pay renewal fees to maintain the design, and Delta Sport do not successfully appeal, will enjoy protection for this small, but evidently mighty, part until its expiry in 2035.

This case highlights that design protection can be obtained on features of the appearance of a product which are seemingly relatively minor. It is therefore worth speaking to an intellectual property professional when launching a new product to determine whether there are design features you might be able to usefully protect.

For advice on design protection, or if you have any questions about this case, please get in touch to speak to one of our attorneys.

Wilson Gunn