CABINET CHAILLOT
PATENTS TRADEMARKS DESIGNS
French Patent & Trademark Attorneys - European Patent Attorneys - Representatives before EUIPO
ISO 9001 CERTIFIED
In order to determine whether the features of appearance of a product were exclusively dictated by its technical function, it had to be established that the technical function was the only factor which had determined those features, the existence of alternative designs not being decisive in that regard.
It is necessary,
1/ to determine the technical function of the product concerned;
2/ to analyse the features of appearance of that product within the meaning of Article 8(1) CDR; and,
3/ to examine, in the light of all the relevant objective circumstances, whether those features are solely dictated by the technical function of the product concerned.
The first contested RCD concerns a cylindrical-shaped building block (or brick) from a toy building set.
The technical function of the building brick concerned by the contested RCD is to allow assembly with, and disassembly from, other bricks of the set.
The Board examines the designs, their cylindrical shapes, the shape of the studs on the upper side, the arrangement of the studs, the hollow on the bottom of the brick with a coupling flange connected to the outer walls by symmetric connecting struts…
The Board then study if all the features of appearance of the product at issue are solely dictated by its technical function.
In the Board’s view, the evidence filed by the invalidity applicant proves that all the features of appearance of the product at issue are solely dictated by its technical function, whereas Lego has not given examples of other considerations, in particular related to the visual aspect, which could have determined these features.
All the features of appearance of the product concerned by the RCD fall within both Article 8(1) and Article 8(2) CDR, since they are both solely dictated by the technical function of that product, namely, to allow the connection and disconnection of that product, and constitute features of interconnection.
HOWEVER, according to Article 8(3) CDR, a Community design must subsist in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.
The RCD concerns a building block (or brick) from a toy building set, which can be assembled with, and disassembled from, other bricks of the set, in different ways to build numerous varying creations.
The RCD is therefore indeed for interchangeable product within a modular system.
Once it is confirmed that the RCD falls within the meaning of Article 8(3) CDR, it still must be new and have individual character. However, in its request, the invalidity applicant focused on the functionnality and not novelty and individual character, so that the submitted documents did not allow to invalidate the RCD.
The validity of each RCD for building blocks is therefore confirmed.
R 29/2018-3 and R 30/2018-3 dated 09/09/2024