08. Oct 21

ECJ: Toy block eligible for design protection

A well-known toy building block shall continue to enjoy protection. That was the verdict of the European Court of Justice (ECJ) in a ruling from March 24, 2021 that overturned a decision of the European Union Intellectual Property Office (EUIPO) (A.: T-515/19).

Design protection can be requested in the European Union for the appearance of the whole or a part of a product resulting from the features, in particular the lines, contours, colors, shape, texture and/or materials of the product itself and/or its ornamentation. We at the commercial law firm MTR Rechtsanwälte note that design protection is a top priority for businesses because of how well recognized designs are by consumers.

It is for this reason that a well-known manufacturer of toy building blocks requested design protection for a building block. The registration of the design was subsequently declared invalid by the EUIPO in 2019 in response to a legal action brought by another company.

In its reasoning, the EUIPO stated that all features of the appearance of the product benefiting from design protection were solely dictated by its technical function, specifically its assembly with other blocks. The EUIPO noted that solely technical functions are not eligible for protection as Community designs.

The manufacturer of the building blocks took action against this and was successful before the ECJ. This was somewhat surprising given that back in 2010 the ECJ had ruled in a trademark dispute that the toy block was not eligible for trademark protection based solely on its shape, it being necessary to achieve a technical result.

The ECJ has now delivered a different verdict with respect to design protection in the present case, even though it too is essentially concerned with technical function. In justifying this decision, the European Court stated that the EUIPO had erred in law by failing to consider the possibility of an exception, namely that mechanical fittings of modular products may exceptionally constitute an important element of the innovative characteristics of modular products and represent a major marketing asset, and therefore ought to be eligible for protection. The ECJ went on to state that the design can benefit from protection if it serves the purpose of allowing the multiple assembly or connection of products within a modular system. The EUIPO must now reconsider the matter.

Lawyers with experience in the field of trademark law can provide counsel.

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