LEGO’s commercial appeal extends from building bricks and figures to films. Its popularity also attracts competing products and imitations, including around the highly successful Botanical Collection. On 19 November 2024, The Hague District Court delivered a judgment in preliminary relief proceedings between LEGO and Wibra concerning design rights and trade marks. Thomas Kriense, intellectual property lawyer at Guldemond Advocaten, explains the decision and the principles of design protection.
The preliminary relief proceedings
The judge found that Wibra’s toy collections, including “Mini Block Flower Arrangement”, infringed LEGO’s registered Community design rights and trade marks. The resulting order prohibited sales, backed by periodic penalty payments, and imposed additional obligations including a recall and disclosure of supplier information. Why did Wibra’s defence fail?
Were LEGO’s designs valid?
Wibra argued, without sufficient substantiation, that LEGO’s registered designs were invalid. In design law, a design concerns a product’s appearance, including shape, lines, colours and texture. Protection requires novelty and individual character. Novelty concerns earlier disclosure of an identical design, subject to the applicable rules and grace periods. Individual character requires a different overall impression on the informed user from earlier designs. Not every appearance qualifies: features dictated solely by technical function are excluded from protection, subject to the legislation’s specific provisions. Design law is not intended to monopolise a technical effect and prevent others from using the underlying technology. A technical invention may instead be eligible for patent protection.
The validity challenge was insufficiently substantiated
LEGO bricks have generated decades of litigation under patent, trade mark and design law. Wibra initially pointed to pending validity proceedings as a reason why the asserted design rights should be regarded as invalid.
The preliminary relief judge found that Wibra had not explained concretely why the particular designs were invalid. Although invalidity can be raised as a defence in preliminary relief proceedings, referring to pending EUIPO cases without developed legal grounds was insufficient. The argument that such proceedings did not permit the necessary investigation was rejected: Wibra had sufficient knowledge and access to substantiate its position. The documents also showed that the EUIPO had upheld most of the LEGO designs addressed in the material before the court.
For the purposes of the preliminary assessment, the court therefore proceeded on the basis that the asserted designs were valid. This was not a final determination of every pending invalidity challenge.
Infringement: scope of protection and overall impression
The overall impression of the designs was central. Under Article 10(1) of the Community Design Regulation applicable to the case, protection extends to designs that do not produce a different overall impression on the informed user. The designer’s degree of freedom also matters. The registered design is the starting point, while marketed products may assist in clarifying its appearance.
The judge found that Wibra’s bricks used in “Mini Block Flower Arrangement” and “Mini Block Funny Animals” did not produce a different overall impression from LEGO’s designs. Differences cited by Wibra, including a small circular indentation on the studs, were considered minor and subordinate. The products therefore fell within the designs’ protection, supporting the finding of infringement.
Trade mark infringement
The court also found that Wibra had used signs identical to LEGO’s marks when promoting its products, infringing Article 9(2)(a) of the EU Trade Mark Regulation. References on social media to “Lego flowers” and “animal Lego” made this aspect of the case unsurprising.
The lesson for businesses
The case highlights the value of a coherent intellectual property strategy for businesses distinguished by original designs and a recognisable brand. Whether more developed invalidity arguments might have led to a different outcome cannot be answered merely by pointing to other pending proceedings.
For questions about design rights and trade marks, contact Thomas Kriense at Guldemond Advocaten.
