IP Cases & Articles

Design application filing dates must be unambiguous

With a registered Community design (RCD) application, there is always the risk (usually a small risk) that the European Union Intellectual Property Office (EUIPO) will not accord the application a filing date on the ground that the 'representations' (the views or figures depicting the design) that were filed were not 'suitable for reproduction'.

This has usually been understood by practitioners to mean that blurred or fuzzy views might result in no filing date being accorded (under Article 36(1) of the Community Design Regulation (CDR)). The same might also be true if the design is shown against a coloured or patterned background that makes it difficult to discern the design itself. It would then be necessary to file new representations which are 'suitable for reproduction', and a filing date will then be accorded, but it will be the date on which the new representations are filed, and importantly will not be the original date on which the first set of representations was filed. This can have serious repercussions. For example, if the RCD application is a first filing for the design in question, the design might have been publicly disclosed in the interval between the original date and the new date, and this could cause problems when, subsequently, corresponding foreign design applications based on the RCD application are filed in foreign jurisdictions which have a requirement for 'absolute novelty' under their local design laws.

For this reason, practitioners, when preparing an RCD application as a first filing, will try to ensure that the views they file depicting the design are not blurred or fuzzy, and that they show up clearly against a neutral background.

However, a probable need for additional caution has been created by a recent decision (on case T?16/16 issued on 09 February 2017) by the General Court of the EU (GC) which suggests that the requirement of 'suitable for reproduction' also means that the views must not contain a muddled collection of different objects that makes it impossible to determine what the design is for which protection is being sought.

The case in question stemmed from an RCD application filed by Mast-Jägermeister SE which showed both a drinking beaker and a bottle. The original examiner at the EUIPO raised objection. The applicant explained that it was not seeking protection for the bottle. A series of examination reports was issued in which the examiner requested that the bottle be removed, or the bottle be disclaimed such as with dashed (broken) lines or by circling round the beaker, or that the application be split into separate applications. The applicant stuck by its wish to continue with the representations as originally filed, supplemented with a written statement that the protected design related to just the beaker.

The examiner eventually refused the application a filing date on the CDR Article 36(1) ground, and the EUIPO's own Board of Appeal upheld the decision. The major stumbling block to being accorded a filing date was that is was not possible to tell from the representations as originally filed whether protection was being sought for the beaker, for the bottle, or for a combination of the beaker and the bottle.

The applicant then appealed further to the GC, which upheld the decision of the Board of Appeal.

Thus, the outcome was that the applicant (Mast-Jägermeister) was left without an RCD application even though the representations filed were not blurred or fuzzy, but simply because the representations had been somewhat visually 'muddled' in what they showed and had thus left uncertainty in the mind of the examiner as to what, of the items shown in the views, actually comprised the design for which protection was being sought.

Thus the take-home message for practitioners is to think through the preparation of the representations to be filed on your RCD application. If you are going to include items extraneous to the item or product for which protection is sought, you should consider, at the time of original filing, making it clear visually that the additional items are outside the scope of protection, and this can be conveniently done by using one of the 'EUIPO approved' visual depiction techniques of dashed (broken) lines or greying out for the excluded features, or a boundary around the features (the item) for which protection is sought.

The requirements surrounding being accorded a filing date for an RCD application have therefore been made a little bit tighter by this GC decision, and practitioners who are used to more-lenient national registered design regimes should take note.

Case details at a glance

Jurisdiction: European Union
Decision level: General Court
Parties: Mast-Jägermeister SE v EUIPO
Date: 09 February 2017
Citation: T-16/16
Decision: http://dycip.com/T-1616

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