No Precise Representation Of A Registered Design Means No Protection.

A Report On The General Court’s Decision in Case T16/16

It seems trite to state that the representation of a registered design must enable third parties to determine with certainty the nature of the protected design.   However this was exactly the issue debated by the Applicant and the EUIPO before the General Court in Case T16/16. The General Court’s confirmation of this principle in its decision of 9 February 2017 is hardly surprising but its discussion of the proper procedure for examination of designs is potentially useful.

The Applicant applied for the registration of Community designs in relation to goods described as “beakers”.  Upon initial examination the Examiner found that this indication of product did not correspond with the representations filed as they also showed bottles.   The Examiner suggested that the applicant should add “bottles” to each design and noted that as beakers and bottles belonged to different classes the applications should be divided accordingly.   The Applicant replied that protection was not sought for the bottles and that it proposed to alter the goods to “drinking beakers as receptacles for a bottle which is part of those beakers”.   The Examiner responded  that while it was clear that the Applicant was not seeking protection for the bottles, that bottles appeared clearly on the representations submitted and the representations were therefore not consistent with Article 4(1)(e)  of Regulation No 2245/2002.  The Examiner suggested that new views should be filed in which the required characteristics would be outlined and that no date of filing could allocated until such views were filed.  There was considerable back and forth but to cut a long story short the Examiner finally issued a decision confirming that the design applications were not to be regarded as applications for Community designs and that no filing date could be attributed to them.  Upon appeal, the Third Board of Appeal essentially confirmed the Examiner’s view but found that the Examiner had not provided a statement of reasons as he was obliged to do.  

The General Court confirmed in its decision that the procedure for examining designs under Regulation 6/2002 has two components. Firstly, the Examiner must consider whether the subject of the application corresponds to the definition of a design (and is not contrary to public policy or morality) and secondly the Examiner must confirm that that the application satisfies the mandatory conditions established by the legislation for a design application.   The General Court held that Article 36 of Regulation No 6/2002 must comply with the conditions laid down in Regulation No 2245/2002 and this necessarily means that third parties must be able to determine with clarity and precision all the details of the design for which protection is sought.   

The General Court unceremoniously rejected the Applicant’s key argument that it was only where the contested design is physically muddled or vague that that the Examiner could find a lack of compliance with Article 36(1) of Regulation No 6/2002.  In these circumstances the General Court, agreeing with the Third Board of Appeal, found that in view of its deficiencies the Applicant’s representation was not suitable for reproduction for the purposes of Article 36(1) of Regulation No 6/2002 and that as the deficiencies had not been remedied within the prescribed period the application could not be dealt with as an application for a registered design.  However the General Court found that the Examiner’s reasons were adequate and in that respect overturned the Third Board of Appeal’s decision.

Moral of the story: representations of designs must be sufficiently clear so that everyone knows what is being protected.  Even populists should not consider that to be an unreasonable requirement.


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