And the importance of protecting design as a model
News reports recently appeared about boxes of building bricks on offer at Wibra (see, for example: ‘Wibra sued over counterfeit flower packets’). LEGO has all kinds of intellectual property rights for its building bricks and thinks that the Wibra bricks used to build flowers and animals are too similar to its own. After being sued for infringement, Wibra said it immediately withdrew the boxes – produced in China and sold for a much lower price than LEGO’s – from shops. The owner revealed that it assumed that there were no rights of others on the bricks and “that it was not copied”. Perhaps some naive thinking?
Wibra’s construction kits can be used to build the following flowers and animals:
Source: rechtspraak.nl
Wibra touted these construction kits via social media channels as ‘Lego flowers’ and ‘animals Lego’, among others. Wibra also used the LEGO brand on its website wibra.co.uk as a meta tag, or invisible keyword included in the HTML source code.
LEGO also has building blocks in its extensive collection with which you can build all kinds of flower figures and animals, for example:
Model law
What LEGO also has, besides of course numerous trademark registrations, is various design registrations. In other words, the design of all kinds of LEGO building bricks is registered as an (EU) design. A design is simply ‘the appearance of a (part of a) product’. Protecting design through design law has numerous advantages that you do not have if you only have to rely on copyright or trademark law (see this blog, among others, about this. You obtain a registration certificate as a design holder, for example. This is often very effective if you want to combat counterfeiting. Another big advantage is that in proceedings, the court automatically assumes the validity of the design (for the requirements of a valid design, see for example this blog). It is then up to the potential infringer to prove that the design is not valid.
LEGO believes Wibra is infringing its design and trademark rights, among others. Simply removing the infringing products from shops is not enough. LEGO starts proceedings
Model registrations
This played an important role in LEGO v Wibra’s case. LEGO relied on various model registrations for LEGO bricks valid in all EU countries, for example for the following bricks:
Wibra did defend itself by claiming that LEGO’s design registrations would be void, i.e. not valid, citing several proceedings on the matter before the EU Design Office. The defence that LEGO’s designs are invalid could well have a chance of success, as the question is whether the building bricks are not motivated solely by technology and/or functionality. In that case, the design right could be declared invalid (although in an earlier case the EU court did rule that LEGO is a modular system which is protected, even if it involves technical connectors). But Wibra does not further substantiate this claim and also does not think it is obliged to do so. This is because the court proceedings are summary proceedings, with short deadlines so Wibra does not consider an extensive investigation into the validity of the designs to be appropriate. The court finds this defence insufficient to assume that LEGO’s models are not valid.
Different overall impression?
Wibra also finds that its building blocks do not infringe LEGO’s design rights. Because of the deviations, Wibra says they show a “different overall impression”, one of the infringement criteria in design law (for a detailed explanation of the criteria, see this blog). This means that, according to the ‘informed user’, the general impression of Wibra’s building bricks would differ from the general impression of the LEGO bricks registered as designs. The court does not go along with this and finds that the alleged differences show just the opposite:
“Wibra has not disputed, with sufficient reasoning, that the building bricks that form part of its Mini Block Flower Arrangement and the Mini Block Funny Animals do not create a different general impression to the informed user than the Lego models so that, on the basis of Article 10(1) GModo, they fall within the scope of the protection to be derived from the Lego models in the preliminary view. As production GP02, Wibra submitted a clear overview of the differences between the models and the bricks used in its construction kits, but this clearly shows that there is no different general impression, while the differences pointed out by Wibra, for instance a small circular indentation on the studs of Wibra’s bricks (see, for instance, the top and bottom illustration in the right-hand column of Model 6) are trivial and banal and fall away as of secondary importance in the equation.”
Infringement
The differences are so minimal that there is no different overall impression. Wibra is thus infringing LEGO’s design rights.
Wibra additionally infringes LEGO’s trademark rights by referring to its construction sets as ‘Lego flowers’ and ‘animals Lego’. Wibra’s defence that the LEGO marks can no longer be seen as trademarks because they are allegedly diluted is rather nonsensical. A trademark can be diluted if the distinctive character is increasingly diminished because the trademark is used by third parties (and/or the trademark owner) as a normal generic term and the trademark owner does not act against this. This is obviously not the case here. Raising this kind of hopeless defence is usually not a good idea and does not make your case stronger.
Wibra loses the case and that means – as usual in these kinds of intellectual property cases, see about that for example this article – that it also has to pay LEGO’s legal costs. A lot less than what LEGO had claimed, but still nearly EUR 15,000. Wibra will have to sell a lot of other products to make up for that loss.
Tip: protect design as a model
It follows once again from this ruling that protecting design as an (EU) design makes a lot of sense. In principle, the court assumes the validity of the design and a ban is given for the entire EU. This is a lot trickier in copyright law. Do make sure that a design registration is made within one (1) year after the design has been disclosed, otherwise the required novelty is compromised.
Want to know more about (the importance of) design protection? Read our other blogs or get in touch.
