Opinion of the Advocate General — ECLI:EU:C:2025:153
Date: 2025-03-06
Language of the case: Hungarian
Procedure: Reference for a preliminary ruling
Origin: Hungary

Summary C-211/24 – 1 
Case C-211/24 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
18 March 2024 
Referring court: 
Fővárosi Törvényszék (Hungary) 
Date of the decision to refer: 
5 March 2024 
Applicant: 
LEGO A/S 
Defendant: 
Pozitív Energiaforrás Kft. 
  
Subject matter of the main proceedings 
Action for a declaration as to the infringement of rights in a design and for a 
determination of the legal consequences to be drawn from that infringement 
Subject matter and legal basis of the request 
Subject matter: interpretation of Articles 8(3), 10 and 89(1) of Council 
Regulation (EC) No 6/2002 of 12 December 2001 on Community designs 
Legal basis: Article 267 TFEU. 
Questions referred for a preliminary ruling 
(1) In a case such as that in the main proceedings, in which the holder relies on 
a design protected under Article 8(3) of Council Regulation (EC) No 6/2002 
of 12 December 2001 on Community designs (‘the Regulation’) in 
connection with one or more building blocks from a toy building set made 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-211/24 
 
2  
by the defendant which perform the same assembly function as the blocks in 
the applicant’s design, is it compatible with EU law for the courts, when 
determining the scope of protection, within the meaning of Article 10 of the 
Regulation, of the applicant’s design, 
– to take as their point of reference an informed user who, in respect of 
the function of the design and that of the product, possesses the 
technical knowledge to be expected of a sectoral expert, 
– to consider an informed user to be one who compares the applicant’s 
design and the defendant’s product by carrying out a thorough, 
technical and methodical examination, and 
– to assume that the informed user’s overall impression of the design and 
of the product is formed primarily of a technical opinion? 
(2) In the event that, in a case as described above, it is to be concluded that the 
protection conferred by the applicant’s design extends to one or a small 
number of pieces of the defendant’s toy building sets, the number of which 
is nonetheless small in relation to the total number of building blocks, is it 
compatible with EU law for a court to have discretion to dismiss the claim 
for a prohibition on the continued importation of the toy building set into the 
country, after taking into consideration the partial nature of the infringement, 
the limited severity and extent of the infringement in relation to the product 
as a whole, and the interests associated with the unrestricted trade in a toy 
building set which is for the most part uncontested, those being classified as 
‘sound reasons’ for the purposes of Article 89(1) of the Regulation? 
Provisions of European Union law relied on 
Council Regulation (EC) No 6/2002 of 12 December 2001 on Community 
designs, in particular Articles 8, 10 and 89 thereof 
Directive 2004/48/EC of 29 April 2004 on the enforcement of intellectual 
property rights, in particular Article 3 thereof 
Succinct presentation of the facts and procedure in the main proceedings 
1 The applicant is the holder of the following two designs. 
2 Forming the subject of design registration number 001950981-0001 is a coupling 
component of a toy building set consisting of a cylinder with studs and two cross-
section axles, perpendicular to each other and to the cylinder, which are connected 
to the cylinder by means of a cylindrical base (the applicant’s product is based on 
the following design: ‘Technic, Axle and pin connector hub with 2 perpendicular 
axles’). 
LEGO 
 
3 
3 Forming the subject of design registration number 002137190-0002 is a coupling 
component of a toy building set which is a modified variant of the well-known 
Lego 2x1 studded brick, which has 2x1 studs on one of its sides (the applicant’s 
product is based on the following design: ‘Brick, modified 1 x 2 with studs on 1 
side’). 
4 The defendant sought to import into Hungary, under the trade mark ‘Qman’, toy 
building sets consisting of prefabricated plastic elements containing, among other 
components, one or more of the building blocks shown in the following 
illustration: * 
 
5 The Nemzeti Adó- és Vámhivatal (National Tax and Customs Administration, 
Hungary) ordered that the defendant’s product be placed under customs 
supervision and instituted against the defendant administrative penalty 
proceedings on the ground of its suspicion that there had been an infringement of 
industrial property rights. On the basis of the applicant’s aforementioned designs 
and in response to the applicant’s request of 22 June 2022, the Kúria (Supreme 
Court, Hungary) ordered at last instance that the defendant’s products be detained. 
The applicant then brought against the defendant the present action for 
infringement, by which it asks the referring court to declare that the rights in the 
two designs have been infringed and to determine the other legal consequences to 
be drawn from that infringement. 
 
* [Translator’s Note: The cell at the bottom of the column in the illustration that contains images 
and registration numbers reads: ‘Registered representation of the applicant’s designs’. The cell 
at the bottom of the column in the illustration that contains images without registration numbers 
reads: ‘Photographs of the defendant’s product taken in the course of the judicial examination’.] 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-211/24 
 
4  
Succinct presentation of the reasoning in the request for a preliminary ruling 
The need to refer questions for a preliminary ruling 
6 The applicant’s designs are ‘building blocks from a toy building set’ in 
Class 21.01 of the Locarno Agreement Establishing an International Classification 
for Industrial Designs of 8 October 1968. Protection for its Community designs 
was conferred by way of the so-called ‘modular exception’ under Article 8(3) of 
the Regulation. 
7 The national court notes that the applicant has in the past exploited patents which 
have now expired and which conferred technical protection on modular toy 
building sets the components of which also include the applicant’s designs now 
under examination. One such patent was the building block system protected by 
Godtfred Kirk Christiansen’s priority patent of 28 July 1958, registered under 
number US3005282. It is striking that the purpose of the invention forming the 
subject of that patent – namely, ‘to provide improved coupling means for 
clamping such building bricks together in any desired relative position thus 
providing for a vast variety of combinations of the bricks for making toy 
structures of many different kinds and shapes’ – and the purpose of the designs 
favoured by Article 8(3) of the Regulation – namely, to allow ‘the multiple 
assembly or connection of mutually interchangeable products within a modular 
system’ – are, in essence, identical. That technical objective is achieved through 
the appropriate (functional) design of the external appearance (shape) of the 
product. 
8 On the basis of the concept of design as defined in the judgment in 
DOCERAM (C-395/16) (paragraph 24), appearance is a decisive factor for a 
design (paragraph 25). By contrast, in accordance with Article 8(3) of the 
Regulation, the holder of protection does not need to show that the design serves 
any aesthetic purpose, it being sufficient, therefore, for the holder simply to show 
that a design in conformity with Articles 5 and 6 of the Regulation serves the 
purpose referred to in Article 8(3) of the Regulation. According to the referring 
court, the foregoing appears to support the inference that, in the light of its 
consequences, the design protection permitted by Article 8(3) of the Regulation is 
more akin, in reality, to the protection of technical characteristics afforded by a 
patent, as had previously been assumed to be the case in paragraph 30 of the 
judgment in DOCERAM. Consequently, the creation of such designs is no more 
than a routine engineering and design activity which can at most serve to extend 
with ever more additional alternative elements the toy building set system which 
is now in the public domain following the expiry of the patent. However, that can 
indeed lead to a situation where, by relying on the protection of new designs that 
has been obtained following the expiry of the patent previously protecting the toy 
building set, the holder can prevent competitors from offering a product having 
certain functional characteristics or limits the possible technical solutions. 
9 The referring court considers that the present case is a clear example thereof. 
LEGO 
 
5 
10 The referring court notes that, while there is no doubt that the legislature laid 
down a clear rule in Article 8(3) of the Regulation, or that designs may be 
protected under that provision, it is uncertain as to what legal or political objective 
the legislature was pursuing. It asks whether the legislature sought to confer on the 
holder of a design protected under Article 8(3) of the Regulation a right such as 
that which can normally be guaranteed by patent protection (but without the need 
for the holder to meet the requirements on which the acquisition of such 
protection is contingent), thus enabling the holder to prevent competitors from 
offering a product having certain functional characteristics or to limit the possible 
technical solutions. 
11 The referring court considers it important to clarify that point because, as the body 
responsible for applying the law, it has an obligation under Article 3(2) of 
Directive 2004/48/EC of the European Parliament and of the Council 
of 29 April 2004 on the enforcement of intellectual property rights to ensure in the 
present proceedings that the requirement that the application of those rules does 
not create barriers to legitimate trade is also fulfilled in the case of an action based 
on the contested designs. In the context of actions for infringement in that field, 
the issues and concerns mentioned are never reflected at the level of protectability, 
in the form of political or legal grounds for excluding protection (see in that 
regard the findings in paragraph 79 of the judgment of 18 June 2002, 
Philips, C-299/99), but at the level of the application of the legislation. 
The first question referred for a preliminary ruling 
12 The legislature did not lay down exceptional rules for the application of the 
exceptional protection provided for in Article 8(3) of the Regulation, which is to 
say that protection under that provision extends to any designs which do not 
produce on the informed user a different overall impression (Article 10(1) of the 
Regulation) and that, in assessing the scope of protection, the degree of freedom 
of the designer in developing his design must be taken into consideration 
(Article 10(2) of the Regulation). 
13 As regards the latter point, the referring court considers that the degree of creative 
freedom must be examined not – as the applicant argued in the main 
proceedings – from the point of view that alternative shapes for the modular 
system can continue to be created ad infinitum, but from the point of view of what 
other alternative shapes specifically make it possible to attain the assembly 
objective that is pursued by the applicant’s design in that system (the capacity of 
the basic Lego 2x1 studded brick to be extended upwards and sideways by means 
of a removable attachment). In that context, the creative margin will necessarily 
be limited. 
14 The first sub-question of the first question referred for a preliminary ruling seeks 
to determine who is the ‘informed user’ whose overall impression of the 
applicant’s design must be compared with that created on him by the defendant’s 
product. The referring court asks whether it is possible to apply to designs 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-211/24 
 
6  
enjoying protection under Article 8(3) of the Regulation the definition of that 
concept given in the judgment of 20 October 2011, PepsiCo v Grupo Promer Mon 
Graphic (C-281/10 P), according to which the concept of the ‘informed user’ lies 
somewhere between that of the average consumer and the sectoral expert with 
detailed technical expertise who is familiar with the various designs in existence 
in the sector concerned, who has some knowledge of the elements normally 
contained in those designs and who, because of his interest in the products in 
question, pays a relatively high degree of attention when using them. 
15 Given that what constitutes the essence of a design enjoying protection under 
Article 8(3) of the Regulation is not the overall impression created by the shape of 
the product, but the technical objective which that design is intended to achieve, 
namely, functionality, it may seem justifiable that the informed user’s knowledge 
should ideally be supplemented by technical and engineering knowledge elevating 
him to the status of sectoral expert and making him comparable to a subject expert 
in possession of an analytical and methodical eye and technical knowledge. 
16 The second sub-question concerns the user’s level of attention. In that regard, if 
the interpretation adopted by the Court of Justice in the judgment in 
PepsiCo (C-281/10 P), cited above, to the effect that the informed user is not 
capable of observing in detail the minimal differences that may exist between the 
designs and products in conflict, could also hold good in the case of designs 
enjoying protection under Article 8(3) of the Regulation, then, since the 
differences between designs enjoying protection under Article 8(3) of the 
Regulation and products that come into conflict with that protection are generally 
minimal, that might support the inference that designs having characteristics such 
as those of the applicant’s designs could not, in essence, evade that protection. 
17 That may justify the need for the comparison between the design enjoying 
protection under Article 8(3) of the Regulation and the contested product to be 
carried out in judicial proceedings too on the basis of specialist design or technical 
knowledge and by means of an analytical and detailed procedure, rather than 
solely on the basis of the rough overall impression of a user who is informed on 
the subject but does not possess such knowledge. 
18 The third sub-question concerns the interpretation of the concept of overall 
impression, which, on the basis of material drawn from the case-law of the Court 
of Justice of the European Union, the referring court describes as an informed 
user’s conscious experience of the product as based on the visual perception of its 
external appearance. That was the approach taken by the higher courts that heard 
the proceedings for interim measures. 
19 However, the visual impression created by a design registered on the basis of 
Article 8(3) of the Regulation is of entirely secondary importance to the functional 
characteristics of that design, which is to say that the similarities and differences 
between such designs are capable of being revealed not on a visual basis or by 
methods that describe a visual impression, but by means of technical analysis and 
LEGO 
 
7 
argument. That approach, which is contrary to the interpretation adopted by the 
Court of Justice, was taken by the court of first instance that heard the proceedings 
for interim measures and the referring court also inclines to the view that it is 
probably not entirely irrelevant to extend the concept of ‘overall impression’ so as 
to include not only the visual perception of the design’s external appearance but 
also the technical opinion of a sectoral expert on the functional characteristics of 
the design. 
The second question referred for a preliminary ruling 
20 If the first question is answered in the affirmative, the referring court, by its 
second question, asks about the scope of its discretion to uphold the claims 
pursued by the holder in relation to the infringement, that is to say, in particular, 
whether it may refrain from ordering measures penalising the infringement for 
‘special reasons’. The expression ‘special reasons for not doing so’, which is 
contained in Article 89(1) of the Regulation, must be interpreted restrictively, in 
the light of the judgment in Nokia (C-316/05). 
21 As regards the substance of the aforementioned discretion, justice and the 
principle of proportionality dictate that, when upholding claims arising from the 
infringement of a right which have been brought by the holder of that right, the 
court must proceed with particular care, since the legal consequences drawn must 
be consistent with the extent of the infringement. 
22 Similarly, if the claim by the holder of the right that all of the products should be 
detained could be upheld simply on the ground that one element or a small 
number of elements of the toy building set – of which there are nonetheless few in 
relation to the total number of pieces – adversely affects rights in one or more 
Community designs, the holder of such rights would in essence have the same 
right as he was able exercise decades ago by invoking the now-expired patent 
protecting the technical dimension of the toy building sets. However, since the 
essence of the right in the design claimed specifically lies in the functionality of 
that design, the holder of the right must also take into consideration even at the 
stage of applying for registration that a third party may have an interest in the use 
of that functionality. 
23 Given that protecting designs in such a way as may constitute a barrier to trade is 
expressly permitted by Article 8(3) of the Regulation, the interests opposed to 
such protection may be assessed only in infringement proceedings, the framework 
for which is established in Article 3(1) and (2) of Directive 2004/48. 
24 Thus, in the event that the referring court considers it plausible in the dispute in 
the main proceedings that the defendant is infringing rights in Community 
designs, the question arises as to whether, given the special circumstances of the 
case, it is appropriate, on the basis of the criteria set out in Article 3(1) and (2) of 
Directive 2004/48 and in the interests of, inter alia, not creating unnecessary 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-211/24 
 
8  
barriers to legitimate trade, to uphold in part the claims pursued by the holder of 
the design or even to dismiss them in their entirety. 
25 At the same time, there is no doubt that that discretion is counterbalanced by the 
referring court’s duty to assist the holder of the design in asserting his intellectual 
property rights and to ensure that judicial practice does not have the effect, in 
essence, of divesting of their substance the exclusive rights derived from the 
protection from which the design benefits. 
26 In the light of the foregoing considerations, the question arises as to whether, 
under EU law, judicial discretion may extend so far as to permit the court of the 
Member State to dismiss in its entirety the claim for a prohibition on the continued 
importation of the toy building set into the country.