In a landmark decision by EUIPO, LEGO has successfully invalidated a Community design for a minifigure, delivering a decisive setback to competitors seeking to create interoperable toy figurines.
The decision, marked as ICD 120 578 and dated 09/12/2024, will likely become a significant precedent in intellectual property law, particularly in the realm of toy design and interoperable products.
Key Issue
The case centered on a complex legal argument about design originality, functionality, and the delicate balance between innovation and intellectual property protection.
Interoperability Argument
The holder of the contested RCD (Registered Community Design) argued that the design features of their figurine (such as C-shaped hands, pin holes in the feet, and head) were functional and essential for interoperability with figurines and sets from other manufacturers, including LEGO.
This argument suggested that these features should not be protected because they are dictated by technical necessity.
Furthermore, the holder of the RCD argued for the right to create minifigures compatible with various manufacturers' sets, claiming their design created a different overall impression on an informed user.
LEGO’s Counterarguments
LEGO's strategic approach was both precise and powerful. They argued that the contested design lacked individuality when compared to their figurines, which are protected as 3D trademarks. They provided examples of toy figurines with alternative configurations (e.g., hands and heads of different shapes) to demonstrate that the design features in question were not dictated solely by functionality or technical necessity.
LEGO argued that these features were instead design choices contributing to the figurine’s visual appearance.
Examination and Final Decision
The European Union Intellectual Property Office (EUIPO) Invalidity Division invalidated the contested RCD, ruling that it lacked individual character under the Community Design Regulation. The contested design was deemed to create the same overall impression as LEGO’s prior designs, undermining its claim of originality.
The most fascinating aspect of the decision centered on functional elements. The design holder contended that certain features, like C-shaped hands, pin holes in feet, and head connections, should be excluded from protection due to their technical necessity for interoperability. However, LEGO effectively countered this argument by presenting evidence of alternative design configurations that maintained functional compatibility.
The Invalidity Division's reasoning was particularly remarkable. They rejected the interoperability argument, observing that a designer's freedom is fundamentally limited only by the basic human-like structure of a toy figure.
More crucially, they found that the contested design was remarkably similar to LEGO's prior design, reproducing arbitrary elements that were not dictated by any technical necessity. This pointed to a lack of genuine innovation, ultimately leading to the design's cancellation.
In fact, a meticulous examination of the designs revealed critical similarities. While the design holder highlighted minor differences in head shape, neck, waistline, and arm positioning, the Invalidity Division found these variations ultimately insignificant. The overall impression created by the contested design was deemed virtually indistinguishable from LEGO's prior design and lacked individual character.
Conclusion
This decision represents more than just a legal victory for LEGO. It's a powerful statement about the importance of genuine innovation in design. The ruling suggests that mere functional compatibility is not enough to justify a new design: true innovation requires something more.
For designers and manufacturers, the message is clear: cosmetic variations are not sufficient. A design must bring something genuinely new and distinctive to the table to warrant legal protection.
The case serves as a critical reference point for designers and manufacturers navigating the complex landscape of intellectual property protection.
Photo source: Daniel K Cheung on Unsplash