Everything that the LEGO™ brand is linked to seems to guarantee huge sales successes. From toy blocks and figures to films. It is not without reason that LEGO is the most valuable Danish brand, after Novo Nordisk. And anyone who is that popular has to deal with freeloaders and copycats. For example, with regard to the once again very popular “Lego Botanical Collection.” The District Court of The Hague ruled on November 19, 2024 in summary proceedings between LEGO and Wibra, in which LEGO successfully took action against alleged infringements of its design and trademark rights. In the blog below, Thomas Kriense, Intellectual Property lawyer at Guldemond Advocaten, discusses this recent ruling and how it currently relates to design protection.
The summary proceedings between Lego and Wibra
The court ruled on November 19, 2024 that Wibra’s toy collections, such as the “Mini Block Flower Arrangement”, infringed LEGO’s Community design and trademark rights. As a result, a sales ban was imposed, together with a penalty payment and additional obligations such as recalling products and providing information about suppliers. What went wrong in this case for Wibra?
The validity of LEGO models?
Wibra argued (but without providing sufficient substantiation) that LEGO’s registered designs were invalid. A “design” is defined under design law as the outward appearance of a product, such as the shape, lines, colours and texture. To be protected, a design must meet two requirements: novelty and individual character. Novelty means that the design may not have been previously made public, while individual character means that the design must give an informed user a different general impression than previous designs. Not all designs are eligible for protection under design law. For example, design law does not offer protection to designs of which all external features are determined exclusively by a technical function. The idea behind this restriction is that design law may not be used to monopolise a technical effect, thereby preventing others from applying the same technology. Patent protection can be applied for technical (in)ventions, but design law is not suitable for this.
Wibra has “not convincingly contested” the validity
The LEGO blocks have been the subject of litigation for decades. Both under patent law, trademark law and design law. Wibra initially argued that, given the fact that the LEGO design rights are still subject to validity procedures, the design rights invoked by LEGO were null and void.
However, the interim relief judge ruled that Wibra had not provided sufficient concrete substantiation as to why the invoked LEGO designs would be invalid. Although Wibra is free to invoke the invalidity of a design right as a defence in summary proceedings, Wibra had merely referred to ongoing proceedings at the EUIPO without presenting clear legal grounds or arguments. The argument that summary proceedings do not allow for such an investigation was rejected, because Wibra had sufficient knowledge and access to substantiate its position. Furthermore, the documents show that most LEGO designs have so far been recognised as valid by the EUIPO (which deals with the registration and validity of design rights in Europe).
In this case, the interim relief judge determined that LEGO’s models were valid, despite Wibra’s attempts to contest the validity by referring to ongoing invalidity proceedings. In other words; the validity of the Lego models must be assumed for the time being.
The infringement question: Scope of protection and general impression
In assessing design infringement, the overall impression of LEGO’s designs was central. According to Article 10 paragraph 1 GModVo, the scope of protection of a Community design is determined by whether it produces a different overall impression on an informed user. The degree of freedom of the designer also plays a role in this. The registered design forms the starting point, but traded products can be included for clarification in order to determine the scope of protection.
The interim relief judge found that Wibra had failed to demonstrate that its building blocks, used in the “Mini Block Flower Arrangement” and “Mini Block Funny Animals”, created a different overall impression than LEGO’s models. Although Wibra provided some differences, such as a small circular indentation on the studs of its bricks, these differences were considered trivial and of a minor nature. As a result, Wibra’s products fell within the scope of protection of LEGO’s models, leading to the conclusion that there was infringement.
Trademark law
De rechtbank stelde ten slotte vast dat Wibra identieke tekens van LEGO’s merken heeft gebruikt bij het promoten van haar producten, wat merkinbreuk opleverde volgens artikel 9 lid 2 sub a UMVo. Het feit dat Wibra op haar social media kanalen sprak over ‘Lego bloemen’ en ‘dieren Lego’, maakt deze vaststelling niet bijster verrassend.
Conclusion
De zaak benadrukt het belang van een sterke intellectuele eigendomsstrategie voor bedrijven die zich onderscheiden met unieke ontwerpen en een herkenbaar merk. Of deze zaak (wellicht in het vervolg) een andere uitkomst had kunnen krijgen als Wibra meer aandacht had besteed aan de nietigheid van de modelrechten, valt nog te bezien.
For questions about design law and trademark law, please contact Thomas Kriense of Guldemond Advocaten.
