A clear identification of the design is required for the attribution of a filing date

C-217/17 P

Mast-Jägermeister v EUIPO

Design: Protection requirements (other)

05 Jul 2018

The matter at hand

Mast-Jägermeister filed applications for the registration of two Community designs, both in respect of ‘beakers’. The representations filed with the application did however not only show a beaker, but also a (considerably smaller) bottle. EUIPO and Mast-Jägermeister subsequently corresponded on the exact objects of the applications, but never came to a conclusion as to what these objects were: Mast-Jägermeister insisted that the application pertained to the beakers as a receptacle for a bottle, without the latter being part of the application, whereas EUIPO was of the opinion that it was not possible to determine from the representation of the two designs whether protection was being sought for the beaker, for the bottle, or for a combination of the two.

EUIPO (both the examiner and the board of appeal) concluded that the characteristics for which protection was sought were not clearly visible and that the application, for this reason, did not meet the requirements of Article 36(1)(c) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs – which requires that the representation of the design is ‘suitable for reproduction’. On the basis of Article 46(2) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, EUIPO consequently decided that both Community design applications could not be regarded as applications, with the result that no date of filing could be attributed.

Mast-Jägermeister subsequently appealed before the General Court. The General Court dismissed the appeal on effectively the same grounds as the application had been disregarded by EUIPO.

Before the ECJ, Mast-Jägermeister argued that the question whether the representations make it possible to determine whether the protection is sought for the beaker, the bottle or a combination of the two, concerns the assessment of the scope of protection of the registered design and is not a ground to disregard the application on the basis of Article 46(2) in conjunction with Article 36(1)(c) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs.

The judgment of the ECJ

The ECJ rather extensively analyses Article 36(1)(c) of the Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, according to which the application for registration of a Community design must contain ‘a representation of the design suitable for reproduction’.

First, it finds that, although the wording of the Article seems to emphasise the technical quality of the representation, “the concept of representation encompasses, in itself, the idea that the design must be clearly identifiable” (paragraph 49). In addition, the ECJ notes that Article 4(1)(e) of the Community Design Implementing RegulationCommission Regulation [EC] No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 inter alia states that the representation must be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished (paragraph 50).

This literal interpretation – by requiring that the representation of a design makes it possible to identify that design clearly – is confirmed by the teleological interpretation of that provision, which must contribute to the proper functioning of the system of registration of designs. The ECJ explains that the function of the graphic representation requirement, in essence, is intended to ensure legal certainty for third parties (paragraphs 52 – 55).

Moreover, the ECJ finds, the fact that the date of filing enables the right of priority to be obtained “justifies in itself the requirement that the representation must not lack precision as regards the design for which registration is sought. […] An imprecise application for registration would give rise to the risk that a design in respect of which the matter to be protected is not clearly identified would obtain excessive protection under the right of priority” (paragraph 56).

Finally, as regards the contextual analyses of Article 36(1)(c) Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, the ECJ notes that Article 12(2) of the Community Design Implementing RegulationCommission Regulation [EC] No 2245/2002 of 21 October 2002 implementing Regulation No 6/2002 provides that a correction of the application cannot change the representation of the design concerned. According to the ECJ, that necessarily implies that “before the application for registration can obtain a date of filing, it must contain a representation that enables the matter for which protection is sought to be identified. It is not possible to interpret [Community Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs] as allowing an application for registration to be considered validly filed when it does not enable the design for which registration is sought to be clearly identified and that deficiency can no longer be remedied” (paragraph 59).

Based on these considerations, the ECJ concludes that the literal, teleological and contextual analysis of this Article all lead to the conclusion that that provision must be interpreted as requiring “the representation of a design for which registration is sought to clearly identify that design, which is the subject of the protection sought by that application” (paragraph 60).

Commentary

This decision has set a high standard for future representations filed. Applicants should carefully consider the graphic representation of the design, as it must be clearly identified. If not, the application will be disregarded in its entirety, which entails that there will be no attribution of the filing date, with all possible consequences for priority and novelty.

To reach this conclusion, the ECJ needed to give a very broad interpretation to Article 36(1)(c), as – contrary to the ECJ’s own finding – a literal interpretation of this article implies that it only pertains to the quality of the imagery (‘suitable for reproduction’), not to whether the object of the design can be understood from the imagery. However, as European legislation provides for no other ground for the EUIPO to check whether the representation of the design application is sufficiently understandable, this outcome is by all means desirable: there can be no legitimate interest to be able to obtain a design registration for a design of which the object is insufficiently clear.