The General Court of the EU has annulled a decision of the EU Intellectual Property Office (EUIPO) Board of Appeal (the board) that a registered Community design for a toy building block was invalid.
A Community design cannot subsist in features of appearance of a product which are solely dictated by its technical function (Article 8(1), Community Designs Regulation (6/2002/EC)) (Article 8). "Solely dictated" means that the technical function is the only factor which determined the design of those features, and that factors relating to the visual aspect have not played any role in the choice of those features. The existence of alternative designs fulfilling the same technical function is not decisive (Doceram GmbH v CeramTec GmbH C-395/16).
A Community design cannot subsist in features of appearance of a product that must necessarily be reproduced in their exact form and dimensions to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function (Article 8(2)). Notwithstanding Article 8(2), a Community design may subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system, subject to the requirements for protection for Community designs of novelty and individual character (Article 8(3)).
L registered a Community design for a toy building block. An EUIPO cancellation division rejected an application for a declaration of invalidity based on the ground that all the features of appearance of the product concerned by the design were solely dictated by the technical function of the product and were therefore excluded from protection under Article 8(1).
On appeal the board annulled the decision and declared the design invalid. L appealed.
The court annulled the board's decision. It held that the board had failed to assess correctly whether L had a defence to the exclusion from design protection for interconnecting products under Article 8(2) conferred on designs in the context of modular systems under Article 8(3). It was irrelevant that L had relied on the modular system defence for the first time before the board.
There was an overlap between the features referred to in Article 8(1) and in Article 8(2). Therefore, the same feature of appearance of a product concerned by a design might be covered by the description of the features referred to in both Article 8(1) and in Article 8(2). They were features of appearance that permitted the connection of the product to another product for which that function was the only factor which determined their appearance.
To preserve the effectiveness of Article 8(3), where the EUIPO examines an application for a declaration of invalidity based on Article 8(1), and finds that the features of appearance of the product fall within both Article 8(1) and Article 8(2), and the design proprietor has relied on Article 8(3), the EUIPO must examine whether the features are capable of benefiting from the protection of modular systems for the purposes of Article 8(3). The EUIPO must also do this where the applicant for a declaration of invalidity does not rely on Article 8(2).
Here, the board failed to assess whether the design met the requirements of Article 8(3) and so it had erred in law.
The board had failed to conduct the assessment under Article 8(1) correctly because it failed to identify all the features of appearance of the product concerned by the design and therefore was unable to determine whether all those features were solely dictated by the technical function of the product (Doceram). If at least one of the features of appearance of the product concerned by the design is not solely dictated by the technical function of the product, the design cannot be declared invalid under Article 8(1).
The board identified six features of appearance of the design and found that all of them were solely dictated by the technical function of the product concerned by the design. However, it failed to identify the smooth surface of the upper face of the toy brick as a feature. It was irrelevant that L had not relied on the feature expressly before the board. In any event, L had invoked it before the cancellation division.
The court rejected the EUIPO's argument that the smooth surface was merely an absence of studs (which studs comprised another feature of the design) and was therefore technical in character. Despite finding in L’s favour overall, the court dismissed L's claim seeking the alteration of the board's decision as the board had not established all the elements of fact and of law to enable the court to reach a decision.
This decision illustrates how a discrete feature of a design may rescue it from an invalidity attack on the ground of technical function. It also demonstrates the potential importance of the modular systems defence to an application for a declaration of invalidity on the grounds of technical function.
Case: Lego A/S v EUIPO T 515/19.
First published in the May 2021 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.