Judges S Rodin, N Piçarra, O Spineanu-Matei (Rapporteur), N Fenger
Advocate General M Szpunar
The proprietor of two registered Community/EU designs (“LEGO”), relating to plastic coupling components of modular toy building sets, complained to the Hungarian tax and customs authority regarding the defendant’s intention to import into Hungary, under a different trademark, toy building sets which consisted of similar plastic building blocks. The authority ordered the seizure of the defendant’s toy sets, suspecting that it had infringed LEGO’s intellectual property rights. LEGO applied to maintain that seizure order, relying on articles 10 and 89 of Council Regulation (EC) No 6/2002 on Community/EU designs. According to article 10(1), the scope of protection conferred by an EU design included any design which did not produce a “different overall impression” on “the informed user”. In assessing the scope of that protection, the “degree of freedom of the designer in developing his design” had to be taken into consideration, under article 10(2). In accordance with article 8(3) of the Regulation, a design which enabled interchangeable component parts to be connected within a “modular system” was protected, provided that it met the requirements of novelty and of individual character laid down in articles 5 and 6 of the Regulation, respectively. The article 8(3) protection was an exception, sometimes known as the “LEGO exception”, to the rule, in article 8(1) and (2) of the Regulation, that a design was not protected if it related to features of the appearance of a product which were solely dictated by their technical function or which had to be reproduced in their exact form and dimensions. LEGO’s application was dismissed on the ground, inter alia, that the designs were not protected, pursuant to article 10 of the Regulation, since the defendant’s products produced a “different overall impression” on “the informed user” from that produced by LEGO’s designs. However, that decision was overturned on appeal. Subsequently LEGO brought an action before the Budapest High Court alleging that the defendant’s building blocks infringed its EU designs. The court had doubts as to the interpretation of the concept of “informed user” within the meaning of article 10(1) of the Regulation in the context of article 8(3), and as to the concept of “special reasons” for not imposing sanctions against the defendant for infringement, within the meaning of article 89(1) of the Regulation. In those circumstances, the Budapest court stayed the proceedings and referred to the Court of Justice of the European Union for a preliminary ruling the questions, in essence, whether: (i) the scope of the protection conferred by a EU design under article 8(3) of Regulation No 6/2002 had to be assessed on the basis of the perception of an “informed user”, within the meaning of article 10, who possessed technical knowledge comparable to an expert in the sector; and (ii) the concept of “special reasons” in article 89(1) of the Regulation included the situation where an infringement related to only a small number of pieces of a modular system.
On the reference—
Held, (1) since article 10 of Regulation No 6/2002 included in its scope community designs of modular systems referred to in article 8(3), the uniform interpretation of the concepts within article 10 applied to article 8(3). First, the concept of “overall impression” consisted of the informed user’s visual perception of the appearance of the product. Second, it followed from Court of Justice case law on EU designs which did not come within article 8(3), that the concept of “informed user” referred to a user who, without being a designer or a technical expert, knew the various designs which existed in the sector concerned, possessed a certain degree of knowledge of the features of those designs, and, as a result of their interest in the products concerned, showed a relatively high degree of attention when they used them. There was nothing to indicate that that concept should be interpreted differently where the protection fell within the scope of article 8(3) of the Regulation. Article 8(3) did not require the “informed user” to be a specialist in the field concerned, or that the “overall impression” produced on that user be formed primarily of a technical opinion. Third, in relation to the “degree of freedom of the designer in developing his design” referred to in article 10(2) of the Regulation, if the designer’s freedom was restricted by a high number of features of appearance of the product which were solely dictated by its technical function, the presence of minor differences between the designs in issue might be sufficient to produce a different “overall impression” on the “informed user”. Although that interpretation of the concept of “degree of freedom” applied in the case of infringement proceedings falling within article 8(3) of Regulation No 6/2002, a special element of modular systems protected by that article was that the features of appearance, which allowed interconnection, had to be considered when assessing the “overall impression”. Therefore, the presence, in the EU design, of interconnecting components protected by article 8(3) of the Regulation might operate against the finding of a different overall impression (judgment, paras 46, 47–49, 52–54, 58, operative part, para 1).
(2) The concept of “special reasons” within the meaning of article 89(1) of Regulation No 6/2002 related only to exceptional situations in which, in the light of the specific features of the conduct alleged against the purported infringer, the EU design court did not have to issue an order prohibiting that person from proceeding with such acts. The fact that an infringement related only to some of the pieces of a modular system, such as in the present case, did not constitute such an exceptional situation. Accordingly, “special reasons”, within the meaning of article 89(1) of the Regulation, did not cover the fact that an infringement related only to some of the pieces of a modular system, the number of which was small in relation to the total number of components of that system (judgment, paras 64– 67, operative part, para 2).
Á György, P Lukácsi, K Szamosi, V von Bomhard and L von Gerlach for LEGO, the design proprietor.
A Lendvai for the defendant.
MZ Fehér and R Kissné Berta, agents, for the Hungarian Government.
P Němečková and A Tokár, agents, for the European Commission.