The Court of Justice of the European Union (CJEU) has dismissed Jägermeister's appeal against the EUIPO's decision that a filing date could not be attributed to its design applications.
Jägermeister had applied for two Community designs for "beakers". The designs they filed showed beakers and bottles. In the EUIPO examiner's view, the correct indication was "bottles", not "beakers" and he suggested Jägermeister remedy the defects in the application within a prescribed period. Jägermeister replied to confirm that it was not seeking protection for the bottles. The examiner responded to say that because of the presence of the bottles, the characteristics of the designs for which protection was sought was not clearly visible and he again suggested Jägermeister remedy the defects in their application.
Under the relevant European regulation (6/2002) it is a condition for the attribution of a filing date that the representation filed serves to identify the design for which the protection is sought. In the examiner's view it was not possible to determine from the representation of the two designs concerned whether protection was being sought for the beaker, for the bottle, or for a combination of the two. Until the defects were rectified therefore, the application would not be given a filing date.
A filing date for a design application is critical as it determines the start of the priority period within which an applicant has the possibility of filing abroad subsequent applications for his design and of claiming priority.
There was much back and forth but ultimately Jägermeister did not follow the examiner's suggestions and did not rectify the defects identified. Its application therefore was not given a filing date.
The CJEU dismissed Jägermeister's submission that the attribution of a date of filing depends only on an examination of the representation of the design from the perspective of whether it can be physically reproduced. The court analysed the wording of the applicable EU regulations and noted the aim of entering designs on a public register which is to make it accessible to the competent authorities and the public - particularly to economic operators. Both require clarity and precision in the representation filed - the former to conduct its examination properly and maintain the register and the latter to have legal certainty of third party rights.
In the CJEU's view, the fact that the date of filing enables a right of priority is itself justification for the requirement that the representation must not lack precision. 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.
The CJEU held that as Jägermeister's application contained deficiencies that were not remedied within the prescribed period, the application could not to be dealt with as one for a registered Community design and that, consequently, no date of filing would be attributed to it.
This judgment conveys a stark message to all potential design applicants as to the importance of filing a properly considered representation. If you are not claiming an element, either do not include it at all, or alternatively, if it provides critical context to your design then use drafting tools to make clear that it is not claimed. This decision may well be indicative of the court and indeed the EUIPO's intention to address the historical practice of filing almost any representation for design protection.
If you require advice as to the impact of this decision on your business activities, please contact a member of our Intellectual Property team.