29 July 2022

EU community design protection of ‘modular’ products – ‘The LEGO Exemption’

Community design regulation (CDR) dictates that “A community design shall not subsist in features of appearance of a product which are solely dictated by its technical function” (Article 8(1) CDR). The rationale behind this, as indicated by the EU Design Directive, is to prevent technological innovation being hampered by design protection – such innovation should instead be protected by patents, which of course enjoy a shorter term, and are required to undergo substantive examination before grant.

It goes further to say that a design shall not subsist in features whose “exact form and dimensions” are required for the product “to be mechanically connected to or placed in, around or against another product so that either product may perform its function” (Article 8(2) CDR). This allows for free competition to provide and purchase products which fit to other products.

However, the situation becomes a little more complex when considering modular products, which can be assembled in a variety of manners. An important aspect of the design of such products naturally relates to how they can be fitted together. The Regulations therefore include an exemption that a design shall “subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system” (Article 8(3) CDR), a caveat which has gained the moniker ‘the LEGO Exemption’.

However, a product can fall under the remit of several of these paragraphs, and it may not always be clear just what can be registered. A recent judgement by the EUIPO’s Board of Appeal (following a judgement by the General Court) has considered the relationship between the technical function of a design and its modular nature – fittingly – in relation to LEGO bricks.

A design relating to a LEGO building block was previously declared invalid by the EUIPO Board of Appeal as its features were considered to be “solely dictated by their technical function”. The General Court since annulled this decision, stating that the Board of Appeal must consider the exemption for modular products (Article 8(3) CDR).

Upon reconsidering the case, the Board again decided that the design did indeed fall within the scope of both Article 8(1) CDR and Article 8(2) CDR, as its features are “solely dictated by its technical function” and having exact “form and dimensions … to be mechanically connected to or placed in, around or against another product so that either product may perform its function”. However, this time it was not the end of the matter.

The Board was then compelled to determine whether the design fulfilled the exemption of Article 8(3) CDR relating to modular systems. Citing that the bricks “can be assembled with, and disassembled from, other bricks of the set in different ways to build numerous varying creations”, it was decided that this exemption was indeed fulfilled, and therefore the design registration was deemed to be valid.

This decision is perhaps unsurprising, the Board themselves even stating that “LEGO bricks are probably the best-known example of such a modular system”. It therefore seems likely that LEGO systems will continue to act as a guiding example of when this exemption may be applied, and it will be interesting to see what other modular systems will also be considered to fall within this ‘LEGO exemption’. From a broader perspective – this decision also seems in line with the intended purpose of Article 8(3) CDR – as, indeed, it seems only just that designers of clever and complex interconnecting systems be fairly rewarded.