Jaume Mourisco Ayuso. Intellectual Property Lawyer. PONS IP Litigation Department

I believe that few of those who can or have the opportunity to read these lines have not played with the legendary LEGO blocks, especially nowadays with their products no longer just for children, but also for adults with their collectible products. What few may have noticed is that behind the success of this brand lies a well-planned brand strategy, as well as firm actions to defend it.

This is not the first time we have heard about LEGO in the European courts, as back in 2024, in case T-537/22 (Delta Sport Handelskontor v EUIPO Lego), it won one of the biggest victories in terms of defending its industrial property rights. Specifically, this ruling was very significant in that it dismissed the application for invalidity of the registration of its designs (the design of its well-known blocks), thus confirming the validity of the registration, as it was eligible for one of the exceptions provided for in Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, specifically an exception allowing the protection of “modular systems”.

Now, we have a new ruling on a preliminary issue, case C-211/24, which, in addition to being a further boost for LEGO, provides clarification from the high court on how two concepts should be interpreted, namely the concept of “informed user” and that of “special reasons”.

This preliminary ruling arises from a dispute between LEGO A/S and Pozitív Energiaforrás Kft, in which the former brought an action for infringement of Community designs No 002137190-0002 and No 001950981-0001, which are reproduced below:

The products which, in LEGO’s opinion, infringed the above designs were the following:

The concept of “informed user” is set out in Article 10 of Regulation (EC) No 6/2002 and is defined as follows:

“1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.”

Moreover, Article 89 of the same regulation, in its first point, sets out:

“1. Where in an action for infringement or for threatened infringement a Community design court finds that the defendant has infringed or threatened to infringe a Community design, it shall, unless there are special reasons for not doing so, order the following measures”

With regard to the first, the court states that we are dealing with a profile halfway between a mere “consumer” and an “expert or specialist”, and that this is a user who, with a high degree of attention, cannot be considered the same as an expert in the field, who is much more meticulous in their assessments.

Thus, the court cites the provisions of the PepsiCo/Grupo Promer Mon Graphic Judgment (Case C-281/10), which stated the following with regard to this concept, and considering that the provisions of that Judgment are fully applicable to the case at hand:

“… concept must be understood as lying somewhere between that of the average consumer, applicable in trademark matters, who need not have any specific knowledge and who, as a rule, makes no direct comparison between the trademarks in conflict, and the sectoral expert, who is an expert with detailed technical expertise”.

Therefore, the concept of an “informed user” will be that person who is familiar with the existing designs in the sector in question, with a certain degree of knowledge of these elements, and who, due to their interest in them, pays greater attention to them, but without being a user with technical knowledge, similar to that of an expert, who would examine the design in question in detail, paying attention to technical considerations.

With regard to the second concept to be clarified, the interpretation of “special reasons”, the court concludes that the fact that, because there are only a small number of modular elements that could constitute a design infringement cannot be included within this concept, this does not justify not ruling in favour of infringement.

Specifically, this judgment once again strengthens LEGO’s position, since while in the previous ruling it received a boost in terms of the validity of its rights (the annulment was denied), in the current case, LEGO obtains new tools to defend its intellectual property rights against third parties, as, with the criteria of “informed user” and “special reasons” being more defined and specific, it is now possible to better design its defence strategies against potential infringing parties who seek, in some way, to take advantage of the fame and reputation obtained over time, as many of us played with its legendary figures as children (and that was a long time ago).

In view of the above, this ruling will be very useful, not only for LEGO itself, but also for companies that are considering developing and marketing similar products, as it has clarified key concepts in assessing the possible existence of an infringement of Community designs (soon to be EU designs with the entry into force of the new regulation), as well as providing clarity as to whether or not the exception contained in the regulation is applicable, which will be very useful in determining their business strategies in order to avoid conflicts with third parties, or to know to what extent they can defend their rights.

Never before has a toy been so useful in supporting the development of case law in the application of intellectual property rights.