1. In addition to the exclusion from design protection of features of appearance which are solely dictated by its technical function pursuant Art. 8(1) CDR, according to Art. 8(2) CDR there is no design protection for features of appearance of a product which must necessarily be reproduced in their exact form and dimensions to be mechanically connected to or placed in another product so that either products may perform its function (“must-fit” part).
An exception to the exclusion of design protection for “must-fit” parts exists under Art. 8(3) CDR for products which (i) fulfil the requirements of novelty (Art. 5 CDR) and individual character (Art. 6 CDR) and (ii) serve the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system. Corresponding regulations can be found for national German designs in Sec. 3(1) no. 2; Sec. 3(2) German Act on the Legal Protection of Designs (DesignG).
2. In 2016, Delta Sport Handelskontor applied for a declaration of invalidity of a Community design registered for Lego for a Lego brick with only one row of studs:
(picture shown in the newsletter)
The invalidity application argued that all features of appearance of the Lego brick were exclusively dictated by its technical function and that protection as a Community design was therefore excluded under Article 8(1) CDR. The Cancellation Division of the EUIPO rejected the application.
The Board of Appeal of the EUIPO initially granted the application for a declaration of invalidity (ref. R 31/2018-3). The technical function that the Lego brick had to fulfil was that it could be joined together with other Lego bricks with sufficient stability to create a toy building. All of the Lego brick’s features of appearance are dictated by this technical function (para. 8).
In its judgment of 24 March 2021 ([building blocks from a toy building set I], ref. T-515/19), the GCEU annulled the decision of the Board of Appeal. It found that the Board of Appeal had infringed Article 8(3) CDR because it had not examined whether the contested Community design fell within the exception to the protection of modular systems, which
Lego had previously invoked. Furthermore, the GCEU found that the Board of Appeal had also infringed Article 8(1) CDR by not considering the smooth surface of the contested Lego brick and by not explaining that it had an exclusively technical function (para. 13 et seq.).
After remitting the proceedings to the EUIPO, the Board of Appeal ruled in favour of Lego and dismissed the application for a declaration of invalidity (ref. R 1524/2021-3). It found that even if all the features of appearance of the Lego brick, including the smooth surface, were solely dictated by its technical function, the Community design was still legally valid as it fell under the exception for modular systems in Article 8(3) CDR. The exception in Article 8(3) CDR was applicable because the Lego brick constituted a “must-fit” part within the meaning of Article 8(2) CDR (para. 16).
This decision by the Board of Appeal has now been confirmed by the GCEU. Delta Sport Handelskontor still has the option of appealing against the GCEU’s decision to the Court of Justice of the European Union (CJEU), although this is only permitted on request in accordance with Art. 58a of the CJEU’s Statute if the proceedings raise an issue of importance for the unity, consistency or development of EU law.
3. The GCEU states (see para. 25 et seq.) that the Board of Appeal was right to examine whether the contested Community design constituted a “must-fit” part within the meaning of Art. 8(2) CDR and thus whether the exception rule for modular systems pursuant Art. 8(3) CDR could apply, although the application for a declaration of invalidity was only based on the alleged technical function of all features of appearance of the Lego brick within the meaning of Art. 8(1) CDR. In order to safeguard the effectiveness of the exception rule of Art. 8(3) CDR, the EUIPO must independently examine whether a contested Community design constitutes a “must-fit” part within the meaning of Art. 8(2) CDR if the owner of the contested Community design invokes the exception for modular systems within the meaning of Art. 8(3) CDR (para. 31). If the exception for modular systems under Art. 8(3) CDR applies, the contested Community design should not be declared invalid, even if its features of appearance are solely dictated by its technical function within the meaning of Art. 8(1) CDR (para. 33).
Furthermore, the GCEU states that, according to the findings of the Board of Appeal, the smooth surface of the contested Lego brick is not solely dictated by its technical function within the meaning of Art. 8(1) CDR (para. 35). This finding applies mutatis mutandis to Art. 8(2) CDR, so that a Community design can only be declared invalid if all its features of appearance fall under the exclusion of design protection for “must-fit” parts (para. 36). However, if at least one feature of appearance of the Community design is protectable, in particular due to the exception rule of Art. 8(3) CDR, the Community design is legally valid (para. 37).
4. With regard to the allocation of the burden of proof for the requirements of the exception in Art. 8(3) CDR, the GCEU clarifies (para. 45 et seq.) that the burden of proof for the novelty and individual character of the contested Community design does not lie with the holder of the design, but that, based on the presumption of validity of a registered Community design, the applicant for a declaration of invalidity must submit concrete evidence proving the lack of novelty and individual character.
According to the GCEU, the CDR system is based on the principle that all applications which fulfil the formal requirements must be entered in the register of Community designs. It follows that a registered Community design can only be declared invalid if an application for a declaration of invalidity is filed (see para. 55). This principle is confirmed by the fact that Art. 85 CDR expressly provides for the presumption of validity for Community designs in the context of infringement proceedings (para. 58). If the holder of a Community design were obliged to prove the requirements of novelty and individual character of its Community design in the context of the examination of the exception for modular systems under Art. 8(3) CDR, this would contradict the logic of the CDR and the presumption of validity of a registered Community design would be undermined (para. 61).
Furthermore, it must be taken into account that the novelty and individual character of a Community design must be examined in the context of an individual citation with a specific design from the prior art. If the holder of a Community design were obliged to prove the novelty and individual character of its Community design within the exception rule of Art. 8(3) CDR, this would amount to the holder being obliged to provide negative evidence, which would be impossible or very difficult to provide (probatio diabolica) (para. 65).
Against this background, it also follows that the disclosure of an earlier design cannot be regarded as a generally known fact, even if the products into which the contested Community design is integrated have been present on the market for some time and are generally known to the public (para. 88). Rather, it is essential that the applicant for an invalidity application submits a specific and defined earlier design in order to enable the examination of novelty and individual character by means of an individual comparison (para. 89).
5. The GCEU’s decision is noteworthy against the background of the CJEU’s decision of 14 September 2010 (Case C-48/09 P [e.g. GRUR 2010, 1008]), in which the registration of a Lego brick as a Community trade mark (today: EU trade mark) was cancelled in the context of invalidity proceedings on the grounds that its characteristics were necessary to obtain a technical result within the meaning of Art. 7(1)(e)(ii) of Regulation (EC) No. 40/94 (today: Art. 7(1)(e)(ii) EUTMR). The German Federal Court of Justice (BGH) has also cancelled the registration of a Lego brick as a German trade mark in the context of invalidity proceedings (decision of 16 July 2009, I ZB 53/07 – Legostein [e.g. GRUR 2010, 231]).
The background to this is that the legal situation regarding the exclusion of protection of technically conditional features in trade mark law cannot be directly transferred to the exclusion of protection under Art. 8 CDR, as the property rights differ in terms of nature, scope and duration. Design law serves to protect the appearance of a product, which in particular has a utility function. The aesthetic realisation of technical specifications may also be worthy of protection. Trade mark law, on the other hand, serves to protect signs of origin. These are primarily word or figurative marks; the protection of the aesthetic design of a product is not absolutely necessary for this. It is possible to register a 3D trade mark under trade mark law. However, it must be borne in mind that the public does not usually infer the origin of a product from its shape or packaging, so that effective trade mark protection for a product shape can only be considered if it deviates significantly from the norm or customary practice in the industry (see e.g. CJEU, decision of 7 May 2015, C-445/13 P, para. 91 – Voss of Norway v OHIM [e.g. GRUR-RS 2015, 80606]).
