LEGO as an industrial design part 2

This publication is a continuation of the review of the legal history of the LEGO company. The previous part was devoted to the LEGO block as an invention, today we will look at the protection of blocks as industrial designs.
First of all, let's talk about what an industrial design protects.
Industrial designs protect the design (appearance) of products; accordingly, the subject of legal protection are only those details of the appearance of the product that serve to satisfy aesthetic needs. Thus, the scope of legal protection of industrial designs excludes parts the presence of which is conditioned by the performance of a specific technical function. For example, when registering an industrial design of a Phillips screwdriver, the Phillips head of the screwdriver is due only to a technical function, and the unique design of the handle serves to satisfy aesthetic needs, accordingly, the protection of the industrial design will extend only to the unique design of the handle

The original LEGO blocks were not patented as industrial designs, since at the time of their registration legal protection for industrial designs was not available in Sweden [1], in addition, legal protection for the invention seemed sufficient.

By the time the legal protection of the patent for the invention expired, the LEGO company was concerned with registering new versions of the blocks as industrial designs.

Most interesting is the history of the building block containing four outer projections on a smooth surface. In 2010, the LEGO company received European design patent No. 1664368-0006 for this block (Fig. 1) [2].

Fig. 1. Industrial design No. 1664368-0006

In 2017, the German company Delta - Sport Handelskontor filed an opposition to the grant of a patent to LEGO [3]. The main argument of the objection was that all the features of the patented block are due only to the technical function.

The European Union Intellectual Property Office rejected the opposition, maintaining legal protection for the patent. However, the Appeal Board of the European Union Intellectual Property Office, in its decision dated April 10, 2019, found that all the appearance features of the product associated with the disputed patent were dictated solely by the technical functions of the product, namely, ensuring the possibility of assembling the part with the rest of the set elements. On this basis, LEGO's patent was revoked.

The third instance was the European General Court, which overturned the decision of the Authority’s Board of Appeal due to the Commission of two errors by the Board of Appeal [4]:

1) The Council ignored the rule of law.

The European Design Regulations provide for a rule that a patent cannot be issued for a product design, the features of which were dictated solely by the technical functions of ensuring the possibility of assembling the product with other elements (clause 2 of Article 8) [5]. However, in paragraph 3 of Art. 8 of the Regulation states that a patent can be granted if the design serves to enable the repeated assembly or connection of interchangeable products in a modular system.

The issue of applying the exception to paragraph 3 of Art. 8 of the Regulations was not considered by the Appeal Council.

2) The Board ignored the fact that there was a smooth surface around the protrusions. The court accepted that the presence of projections was due to a technical function, but it was possible to design the area of ​​the block other than a smooth surface, that is, the smooth surface was due to the creative decision of the designer.

Based on the above arguments, the decision of the Appeal Board was overturned, legal protection of the industrial design was preserved and is in effect to this day [6].

The LEGO company also has other industrial designs, for example, there are 205 patents for industrial designs in force in the European Union as of the date of writing this text [7].

List of sources

1.

Lundahl J. The LEGO BRICK in the Borderzone Between forms of Protection. – 2005. S. - 26;

2. 

https://euipo.europa.eu/eSearch/#details/designs/001664368-0006

3. 

https://curia.europa.eu/juris/documents.jsf?num=T-515/19

4. 

https://curia.europa.eu/jcms/upload/docs/application/pdf/2021-03/cp210048en.pdf

5. Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs;

6. 

7. 

https://euipo.europa.eu/eSearch/#advanced/designs/1/100/n1=ApplicantName&v1=Lego%20A%2FS....