updated on 13 February 2018
QuestionWhy were Jägermeister's dreams of obtaining a registered Community design for its shot glass shattered?
Mast-Jägermeister SE (Jägermeister) did not succeed in demonstrating that its application for a registered Community design for a shot glass, which showed images of the vessel alongside a bottle, was a sufficiently clear description of the design.
In upholding a European Union Intellectual Property Office (EUIPO) Board of Appeal decision, the EU General Court has reinforced the strictness of the test as to certainty and clarity in relation to registered Community design applications.
On 17 April 2015 Jägermeister filed applications for the registration of Community designs with the EUIPO relating to shot glasses (identified in this article as 'beakers', in accordance with their classification under the Locarno Agreement). The representations in the application included images of the beaker alongside Jägermeister bottles.
On the same day, following its initial review, the EUIPO's examiner informed Jägermeister that the indication of the product of which protection was sought (ie, the beaker) did not correspond to the representations, on the ground that those representations also included a bottle in the image as filed. The EUIPO's examiner therefore suggested that the multiple application for the beaker and the bottle be divided into two separate applications, or the representations for the beaker be amended as, unless the deficiencies were remedied within the prescribed period, the application would be refused.
Jägermeister asserted that no protection was sought for the bottles and it accordingly proposed to set out the indication of the goods as follows: ‘Drinking beakers as receptacles for a bottle which is part of those beakers’. However, on 31 August 2015 the EUIPO concluded that despite these assertions Jägermeister had failed to remedy the defects in the application and that, in accordance with Article 46(2) of the Community Designs Regulation (CDR), the application was not to be regarded as valid. As the deficiencies had not been remedied within two months, the application could not be dealt with as a registered Community design application.
Jägermeister appealed but, on 17 November 2015, the Third Board of Appeal dismissed Jägermeister's appeal, confirming that it was not possible to determine from the two designs whether protection was being sought for the beaker, for the bottle, or for a combination of the two. In addition, it held that the application could not be given a date of filing because of the defects, since an application cannot be given a date of filing until deficiencies are remedied. Jägermeister appealed to the CJEU General Court.
Jägermeister asked the General Court to annul the contested decision, as above. Article 4(1)(e) of the Implementing Regulations provides that the representations must be "of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished". In addition, the EUIPO must verify, pursuant to Article 45 of the CDR, that the application satisfies the mandatory conditions under Article 36(1) (which includes "a representation of the design suitable for reproduction") and Article 36(2) of the CDR (which includes an "indication of the products in which the design is intended to be incorporated").
The General Court upheld that the representations failed to comply with the above requirements and, notwithstanding the EUIPO's examiner giving Jägermeister the opportunity to remedy them, the deficiencies in the original application still remained. As a result, the application could not have been dealt with as an application for a registered Community design.
Jägermeister had also requested that the General Court fix 17 April 2015 as the date of filing (ie, the original application date). The date of filing determines the priority in time of the registered design. Jägermeister argued for it to be set at a date as early as possible, by reference to the date upon which the application was filed, on the basis that there were no deficiencies in the application to be remedied so it was valid as first submitted.
The EUIPO usually attributes a date of filing when it has examined whether the application complies with the requirements for a registered Community design. If any deficiencies in the filing are remedied within a prescribed period, the EUIPO will accord the date on which the deficiencies are remedied as the date of filing. If no remedies are made, the application cannot be dealt with as an application for a registered Community Design so no filing date will be given. As Jägermeister refused to remedy the deficiencies identified by the EUIPO in the Representations, the EUIPO would not provide a date of filing.
While the General Court held that the date of filing request was inadmissible on the ground that it is a direction and the General Court cannot issue directions, it seems likely this would have also failed, given the General Court's finding that the representations failed to comply with the requirements of a registered Community design.
Jägermeister was ordered to pay the costs as a result of being the unsuccessful party. The company has appealed the decision to the EU Court of Justice.
This decision is a reminder of the requirement that representations given in any registered Community design application must permit all the details of the matter for which protection is sought to be clearly distinguished. The reason for this rule is to enable third parties to determine with clarity and precision all the details of the design for which protection is sought.
It is unfortunate for Jägermeister that their representations were deemed by the General Court to lack sufficient clarity and precision, particularly as the inclusion of a bottle in the images arguably makes the intended use and overall design of the beaker more obvious to third parties.
Nevertheless, future applicants should use this as a reminder to ensure that any representations given in applications clearly show the relevant design and exclude any extraneous matter for which protection is not sought by one of the methods recognised by the EUIPO (eg, broken lines, blurring or shading).
It is also a reminder to applicants to consider carefully any suggestions made by the EUIPO's examiners in the course of the filing and prosecution process and to seek clarity if the EUIPO guidance is unclear.
Rose Smalley, solicitor, Patrick Cantrill, partner, and Racheal Hearson, associate & registered trademark attorney, are all part of Womble Bond Dickinson’s IP team.