Brick by Brick: EU’s General Court builds on Community Design Regulation to protect designers of modular products.
The design of a product is an increasingly important factor for consumers. Design rights protect the appearance of a product, accounting for its shape, colour, and the materials used. Since 2002, industrial design protection has been harmonised across all EU member states thanks to Council Regulation No 6/2002 (“Regulation”), which introduced a one-off, inexpensive procedure for registering designs with the European Union Intellectual Property Office (“EUIPO”). Once a design has been registered as a Registered Community Design, the designer has the exclusive right to use the design and to prevent any third parties from using it anywhere in the EU for up to 25 years.
There are also Unregistered Community Designs, which benefit from protection from deliberate copying for a period of 3 years, without the need for registration.
Both registered and unregistered designs must be new and have an individual character to benefit from protection. There are also various other considerations which will determine whether a design can be protected.
Some of these are to be found in Article 8 of the Regulation, which addresses those designs dictated by their technical function and the designs of interconnections. Article 8(1) states that “A Community design shall not subsist in the features of appearance of a product which are solely dictated by its technical function”. Therefore, if a product has certain design features which are present solely for their technical purpose, the design cannot be a Community design for the purposes of the Regulation, and it will not be afforded protection.
A similar prohibition exists under Article 8(2), which states “A Community design shall not subsist in the features of appearance of a product which 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”. A feature of a product which must adhere to certain dimensions or form to allow it to connect to another product cannot be protected as a Community design. However, this is somewhat tempered by Article 8(3) which states that “notwithstanding paragraph 2, a Community design shall…subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system”. This modular system exception was a very important consideration for the General Court in the recently decided case of Lego A/S v EUIPO.
In this case, an application was made for a declaration of invalidity of a registered design for a toy brick, on the grounds that all the features of the product’s design were solely dictated by their technical function, and the brick was therefore excluded from the protection of the Regulation by Article 8(1). The EUIPO cancellation division initially rejected this application, but on appeal to the EUIPO board of appeal the board declared the design invalid. Lego appealed to the General Court.
The General Court held that where features fall into both Article 8(1) and Article 8(2), the EUIPO cannot just apply Article 8(1) to these features. This is because applicants for a declaration of invalidity relating to such a product might base their applications on Article 8(1) alone, preventing the design registrant from relying on the Article 8(3) exception, which is an exception to Article 8(2) only. Accordingly, where features fall within Articles 8(1) and 8(2), but an applicant seeks a declaration of invalidity based only on Article 8(1), the EUIPO must also consider whether the features benefit from this modular systems exception. The board of appeal was therefore mistaken in failing to assess whether the design met the requirements of Article 8(3).
The General Court also found that the board of appeal had failed to conduct the Article 8(1) assessment correctly, as it had failed to identify all of the features of appearance of the product, and was therefore unable to determine whether all of the product’s features were solely dictated by the technical function of the product. Under DOCERAM GmbH v CeramTec GmbH, if at least one of the features of the appearance of the product was not solely dictated by the product’s technical function, then the design could not be declared invalid under Article 8(1). Here, the board of appeal had failed to identify the smooth upper surface of the brick as a feature, instead viewing this as a mere absence of studs.
The General Court’s decision indicates that an application for a declaration of invalidity on the grounds of technical function cannot make use of tactics to deprive the design registrant of the use of the modular systems defence. Further, it emphasises the importance of considering all aspects of a design when determining whether a product’s features are dictated by solely technical purposes.
Following the end of the transition period on 31 December 2020, this Community design regime ceased to apply in the UK, meaning that both registered and unregistered Community designs ceased to have any effect in the UK. Now, design protection in the UK is solely governed by the UK’s domestic design legislation, primarily the Registered Designs Act 1949. The UK registered design (“UKRD”) regime was in place prior to the introduction of the Regulation continues in force post-Brexit. All registered Community designs which were registered and published at the end of the transition period were automatically entered onto the UK designs register as UKRDs, retaining the application, registration and priority dates of the parent Community designs.
But for some minor discrepancies in defined terms (registered design as opposed to Community design, for example), Section 1C Registered Designs Act 1949 almost entirely reflects the provisions of Article 8 of the Regulation, such that the Lego A/S v EUIPO case could have easily produced the same judgment with the same construction of the legislation had it been considered in the UK courts, albeit, the legislation being considered would be the Registered Designs Act 1949, as opposed to the Regulation. However, it remains to be seen whether the UK courts will take the EU General Court’s opinions on the interpretation of Article 8 into account when considering Section 1C in the context of the UKRD regime, or whether they will instead take a different approach to the interpretation of these almost identical provisions on designs dictated by technical function.