EU design dispute: LEGO’s modular system - EU trade mark dispute: pastaZARA Sublime v. ZARA

EU design dispute: LEGO’s modular system

On 4 September 2025, the Third Chamber of the Court of Justice of the European Union ruled on case C-211/24, which was brought by LEGO A/S against the importer Pozitív Energiaforrás Kft. The case concerned the scope of protection for Community designs applied to modular systems, and the measures that courts should take when infringement is identified.

The case arose from the customs detention of 'Qman' sets that, according to LEGO, included connectable pieces that were visually similar to two registered Community designs (no. 001950981-0001 and no. 002137190-0002) These designs form part of LEGO’s modular system, which allows multiple assemblies and disassemblies of interchangeable plastic elements. The Budapest High Court (Fővárosi Törvényszék) initially refused to uphold the measure on the basis that the pieces gave a different overall impression to that of LEGO’s designs. However, the Budapest Regional Court of Appeal (Fővárosi Ítélőtábla) overturned this decision and ordered the seizure, a decision that was later confirmed by the Hungarian Supreme Court (Kúria). Subsequently, LEGO brought an infringement action before the High Court, which referred two preliminary questions to the CJEU. The first concerned how to assess infringement where the design is protected under the modular-systems exception in Article 8(3) of Regulation (EC) No 6/2002. This included the meaning of 'informed user' in this context. The second question concerned whether sanctions may be refused when only a few pieces in the set infringe.

Firstly, the CJEU noted that the Regulation protects a product's appearance if it is novel and has individual character. Infringement is determined by the 'overall impression' on an informed user, taking into account the designer's degree of freedom (article 10). However, Article 8 limits this protection by excluding features based solely on technical function and features that must be reproduced exactly for mechanical connection. Nevertheless, it protects designs that enable the assembly or connection of interchangeable products within a modular system, as long as they are new and have individual character.

In response to the first question, the Court stated that, even for modular designs under Article 8(3), the comparative standard is not that of a technical expert. The informed user is defined as a non-designer and non-technician who is familiar with designs in the sector and pays relatively high attention to detail. The comparison focuses on visual perception of appearance rather than a minute, engineering-led technical examination. However, the designer’s degree of freedom affects the analysis: where creative freedom is tightly constrained by functional requirements, relatively small differences may suffice to produce a different overall impression, whereas where freedom is broader, more pronounced differences will be required.

In this case, clarification is important because the Hungarian court had applied an overly technical standard. It focused on minor differences, such as curved edges or altered connectors, to conclude that the Qman pieces created a different impression. Instead, the CJEU held that the benchmark is the informed user, who assesses the overall visual appearance rather than minute technical details. Therefore, minor variations are not enough to avoid infringement if the general impression remains the same, an approach that ultimately reinforced LEGO’s position.

In addition, the Court strictly interpreted the notion of 'special reasons' in Article 89(1), the only basis on which a court can withhold standard measures such as an injunction or the seizure of products and materials in cases of EU Design infringements. The mere fact that the infringement concerns only a few components in the set is not, in itself, a special reason. Only exceptional circumstances relating to the specific conduct of the infringer could justify departing from the general rule of granting relief.

In short, the CJEU confirmed that infringement of modular designs turns on the informed user’s visual impression, taking into account the designer’s freedom, and that protected connection points form part of that impression. The Court also set a high bar for denying injunctions and seizures. The fact that only a few pieces infringe is not enough to justify the court issuing a resolution that prohibits a third party from continuing such acts.

EU trade mark dispute: pastaZARA Sublime v. ZARA

On 10 September 2025, the General Court of the European Union ruled on case T-425/24, which concerned an opposition to the EU figurative trade mark pastaZARA Sublime (no. 2020000070078).

In 2023, Ffauf Italia SpA applied to register a figurative trade mark for pasta and related foodstuffs in Classes 29, 30, 31 and 23 of the Nice Classification, featuring the word element 'pastaZARA' (traditionally displayed within an oval frame depicting a woman carrying wheat) alongside the descriptor 'Sublime'. However, Industrias de Diseño Textil, S.A. (ZARA) filed an opposition under Article 8(5) of the EU Trade Mark Regulation, invoking the reputation of its mark not only in the fashion and retail sectors but across the general public. The EUIPO’s Fifth Board of Appeal upheld the opposition, finding that given the reputation of the Zara trade mark, the public was likely to see a link between the two names, and rejected Ffauf’s arguments that it had any valid reason for its use. Ffauf appealed to the General Court.

Ffauf pointed to its historical roots in the Dalmatian city of Zadar (formerly Zara), where the term 'Zara' was used for pasta between the 1930s and 1943. This predates Inditex's first use of 'Zara' in 1975 and its 2001 trade mark filing. The company also highlighted its long-standing, good-faith use of the PastaZARA brand, including an Italian trade mark application, company names featuring PastaZARA since 1978/1988, and sales across several EU member states. On this basis, Ffauf argued that it had good reason to use and register the name, and that there is no risk of confusion, since the goods are unrelated. However, Inditex relied on ZARA’s reputation to allege an unfair advantage, a position that was upheld by the EUIPO.

The General Court stated that, under Article 8(5), proof of both the reputation of the signs and a link between them must be provided, as well as evidence of either an unfair advantage or a detriment. However, even if these conditions are met, protection will not apply if the later applicant can demonstrate due cause. In this case, the Court held that the Board had not demonstrated a relevant connection between the signs for non-competing, non-complementary goods marketed by different operators. In any event, the Court identified due cause in the case, based on Ffauf’s decades of prior good faith use of 'pastaZARA', its broad market implantation and registrations in countries like Italy and Portugal, the economic relevance of that use and the historical origin of the name. Furthermore, the Court criticised the Board for imposing conditions that were not required by law, such as proving the 'necessity' of using 'Zara' to market pasta, the existence of a prior agreement with ZARA or specific investment thresholds incurred by Ffauf in promoting the “pastaZara” brand in the past. Furthermore, it held that the BoA had erred discounting any arguments related to Ffauf’s good faith in the use of its mark, which is a relevant factor in the due cause assessment. Taking all of these factors into account, the General Court annulled the Board of Appeal’s decision.