1.

One might have expected the Courts of the European Union to have exhaustively considered most issues relating to applications to register intellectual property rights on account of the large number of cases relating to the European Union trade mark. However, the present appeal relating to a design concerns, with the attribution of a date of filing and the associated priority, a set of questions on which, as yet, there has been scarcely any case-law.

2.

This case concerns the requirements to be placed on an application for registration of a design for the European Office Intellectual Property Office (EUIPO) to attribute a filing date to it. Whilst the appellant, Mast-Jägermeister, considers that only certain technical requirements on the design are justified, EUIPO and the Court of Justice require that it be unequivocal also in terms of its content.

3.

Article 4(A) of the Paris Convention ( 2 ) lays down the right of priority which arises from the registration of intellectual property.

‘A. [National filing]

(1)   Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

(2)   Any filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union or under bilateral or multilateral treaties concluded between countries of the Union shall be recognised as giving rise to the right of priority.

(3)   By a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned, whatever may be the subsequent fate of the application.’

4.

Article 3(a) of the Designs Regulation ( 3 ) defines as a ‘design’‘the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation’.

5.

Article 36 of the Designs Regulation lays down the conditions with which applications for a design must comply:

‘(1)   An application for a registered Community design shall contain:

…

(2)   The application shall further contain an indication of the products in which the design is intended to be incorporated or to which it is intended to be applied.

(3)   …

(4)   …

(5)   The application shall comply with the conditions laid down in the implementing regulation.

(6)   …’

6.

Article 38(1) defines the date of filing of an application for a design:

‘The date of filing of an application for a registered Community design shall be the date on which documents containing the information specified in Article 36(1) are filed with [EUIPO] …’

7.

Article 41(1) to (3) of the Designs Regulation essentially corresponds to Article 4(A) of the Paris Convention.

8.

The examination as to formal requirements for filing forms the subject matter of Article 45 of the Designs Regulation:

‘(1)   [EUIPO] shall examine whether the application complies with the requirements laid down in Article 36(1) for the accordance of a date of filing.

(2)   [EUIPO] shall examine whether:

(3)   The conditions for the examination as to the formal requirements for filing shall be laid down in the implementing regulation.’

9.

Article 46 of the Designs Regulation stipulates which deficiencies are remediable:

‘(1)   Where, in carrying out the examination under Article 45, [EUIPO] notes that there are deficiencies which may be corrected, the Office shall request the applicant to remedy them within the prescribed period.

(2)   If the deficiencies concern the requirements referred to in Article 36(1) and the applicant complies with [EUIPO’s] request within the prescribed period, [EUIPO] shall accord as the date of filing the date on which the deficiencies are remedied. If the deficiencies are not remedied within the prescribed period, the application shall not be dealt with as an application for a registered Community design.

(3)   If the deficiencies concern the requirements, including the payment of fees, as referred to in Article 45(2)(a), (b) and (c) and the applicant complies with [EUIPO’s] request within the prescribed period, [EUIPO] shall accord as the date of filing the date on which the application was originally filed. If the deficiencies or the default in payment are not remedied within the prescribed period, [EUIPO] shall refuse the application.

(4)   If the deficiencies concern the requirements referred to in Article 45(2)(d), failure to remedy them within the prescribed period shall result in the loss of the right of priority for the application.’

10.

Article 47 of the Designs Regulation sets out the grounds for non-registrability:

‘(1)   If [EUIPO], in carrying out the examination pursuant to Article 45, notices that the design for which protection is sought:

it shall refuse the application.

(2)   The application shall not be refused before the applicant has been allowed the opportunity of withdrawing or amending the application or of submitting his observations.’

11.

Article 4 of the Implementing Regulation ( 4 ) specifies the requirements for the representation of the design:

‘(1)   The representation of the design shall consist in a graphic or photographic reproduction of the design, either in black and white or in colour. It shall meet the following requirements:

…

12.

Article 10 of the Implementing Regulation contains further rules on examination of requirements for a filing date and of formal requirements:

‘(1)   [EUIPO] shall notify the applicant that a date of filing cannot be granted if the application does not contain:

(2)   If the deficiencies indicated in paragraph 1 are remedied within two months of receipt of the notification, the date on which all the deficiencies are remedied shall determine the date of filing.

If the deficiencies are not remedied before the time limit expires, the application shall not be dealt with as a Community design application. Any fees paid shall be refunded.’

13.

On 17 April 2015 Mast-Jägermeister filed an application for registration of the Community design at issue with EUIPO, pursuant to the Designs Regulation. To that end, it submitted representations showing beakers and the well-known bottles of the alcoholic beverage which it produces. These representations are not reproduced in the judgment as they were classified as ‘confidential’.

14.

The goods in respect of which the applications for registration were made are ‘beakers’ in Class 07.01 of the Locarno Agreement of 8 October 1968 establishing an international classification for industrial designs, as amended.

15.

Between 17 April and 31 August 2015 the EUIPO examiner had intensive communications with Mast-Jägermeister and drew up a total four examination reports, all of which concluded that the representation of the design was not sufficiently clear on account of the bottles depicted.

16.

Since Mast-Jägermeister did not rectify that objection, the examiner noted, by decision of 31 August 2015, that it had not remedied the defects in the applications for registration, as it did not approve of the examination report. The examiner took the view, pursuant to Article 46(2) of the Designs Regulation and Article 10(2) of the Implementing Regulation, that the design applications at issue were not to be regarded as applications for Community designs, with the result that no date of filing could be attributed.

17.

On an appeal by Mast-Jägermeister, the Third Board of Appeal of EUIPO confirmed, by decision of 17 November 2015, that it was not possible to determine from the two designs at issue whether protection was being sought for the beaker, for the bottle, or for a combination of the two.

18.

The General Court dismissed the action brought by Mast-Jägermeister by the judgment under appeal of 9 February 2017. ( 5 )

19.

By an application dated 21 April 2017, received on 26 April 2016, Mast-Jägermeister lodged an appeal against the judgment of the General Court und claimed that the Court should,

20.

EUIPO contends that the Court should:

21.

Mast-Jägermeister and EUIPO submitted written observations and presented oral argument at the hearing on 7 February 2018.

22.

The present dispute derives from the fact that the application for registration at issue allegedly represents the design claimed, a beaker together with other objects, namely bottles, which are not intended to form the subject matter of the design.

23.

Both the instances of EUIPO and the General Court consider that this form of representation is incompatible with the Designs Regulation. However, no decision thereon need be given in this case. Instead what needs to be clarified is whether or not this kind of representation satisfies the requirements to be placed on an application and EUIPO should therefore have accorded as the date of filing the date on which the application was filed.

24.

In order to answer this question, I will, on the basis of the relevant provisions of the Designs Regulation, first examine Mast-Jägermeister’s argument concerning the wording and history thereof, before moving on to the provisions on remedy and the reference in Article 36(5) of the Designs Regulation to the Implementing regulation, the function of the date of filing in relation to the acquisition of priority and the purpose of representing the design in connection with an application. Finally, I will address the objections raised by Mast-Jägermeister to the General Court’s comments on the examinations to be carried out by EUIPO and the clarity of the representation of the design submitted with the application.

25.

Under Article 38(1) of the Designs Regulation, the date of filing of an application for a registered Community design is to be the date on which documents containing the information specified in Article 36(1) are filed with EUIPO by the applicant. That information includes in particular a representation of the design suitable for reproduction (subparagraph (c)).

26.

Article 10(1) of the Implementing Regulation specifies that no date of filing can be accorded if the application contains no representation of the design pursuant to Article 4(1)(d) and (e). In particular, under subparagraph (e) the design is to be reproduced on a neutral background and is not to be retouched with ink or correcting fluid. The representation is also to be of a quality permitting all the details of the matter for which protection is sought to be clearly distinguished and at the same time enabling the size of the reproduction to be reduced or enlarged to the format of the register.

27.

EUIPO and also the General Court take the view that the representation of the design in the application by Mast-Jägermeister does not meet the requirements laid down in Article 36(1) of the Designs Regulation. The General Court finds in particular at paragraphs 44 to 46 of the judgment under appeal that the representation of the beaker to be protected together with a bottle do not distinguish the subject of the protection with sufficient clarity for the purposes of Article 4(1)(e) of the Implementing Regulation. Since Mast-Jägermeister did not correct the representation within the prescribed period, no date of filing is to be accorded.

28.

Mast-Jägermeister regards this finding as an infringement of Articles 45 and 46 of the Designs Regulation, in conjunction with Articles 36 and 38 thereof. In this regard it does not complain (primarily) about the factual assessment by the General Court, but rather disputes that the unequivocal representation of the design is of any relevance at all in according a date of filing. In this regard the question arises whether Article 36(1)(c) of the Designs Regulation and Article 4(1)(e) of the Implementing Regulation contain merely technical requirements or also requirements as regards content.

29.

Mast-Jägermeister takes the view in particular that with regard to the accordance of a date of filing it is sufficient for the representation of the design to satisfy the technical requirements. This is said to be clear from the Commission proposal which led to the Designs Regulation, ( 6 ) and from Article 4(1)(e) of the Implementing Regulation.

30.

It must be conceded in this regard that in the case of both its proposal and Article 4(1)(e) of the Implementing Regulation the Commission focused primarily on the technical quality of the representation. In particular retouching is prohibited and the representation must be such that it can be reduced or enlarged to a particular size.

31.

Furthermore, at first sight Article 36(1)(c) of the Designs Regulation also highlights the technical aspects of the representation of the design. It requires a ‘representation of the design suitable for reproduction’.

32.

However, on closer inspection Mast-Jägermeister’s argument is unconvincing. In addition to the technical requirements which a ‘representation suitable for reproduction’ must fulfil, the concept of representation also encompasses the idea of being able to distinguish the content of the design.

33.

By contrast, the second sentence of Article 4(1)(e) of the Implementing Regulation does not lay down additional requirements but rather merely clarifies this aspect by requiring a quality of representation ‘permitting all the details of the matter for which protection is sought to be clearly distinguished’.

34.

Consequently, it is possible to interpret Article 36(1)(c) of the Designs Regulation, by its wording and in the light of the second sentence of Article 4(1)(e) of the Implementing Regulation, as meaning that the representation of the design in the application must not only satisfy certain technical requirements, but also be unequivocal in terms of its content.

35.

Mast-Jägermeister submits, however, that an infringement of Article 4(1)(e), second sentence, can be cured under Article 46(3) of the Designs Regulation without altering the date of filing. This submission is based on the argument that under Article 36(5) the Implementing Regulation applies to the filing and an infringement of its requirements thus falls under the examination under Article 45(2)(a), which may be remedied in accordance with Article 46(3).

36.

As stated above, Article 36(1)(c) of the Designs Regulation itself can be understood, independently of a separate infringement of Article 4(1)(e), second sentence, of the Implementing Regulation, as meaning that the reproduction of the content of the design must be unmistakeable. An infringement of Article 36(1)(c) of the Designs Regulation falls, however, under Article 46(2) with the result that a date of filing is to be accorded only when the deficiency is remedied.

37.

This submission of Mast-Jägermeister does not therefore call into question the interpretation of the wording of Article 36(1)(c) of the Designs Regulation.

38.

In the face of the interpretation of Article 36(1)(c) of the Designs Regulation thus far developed, Mast-Jägermeister refers, however, in particular to the specific function of the date of filing, the performance of which does not require an assessment of the content. Ultimately, however, this submission too is unconvincing.

39.

It is true that the application for registration of a design has legal consequences per se. Mast-Jägermeister highlights in particular the priority associated with the filing which, under Article 4 of the Paris Convention, ( 7 ) a person filing an application can claim in other legal systems. Conversely, Article 41 of the Designs Regulation recognises such effect within the Union for an application in the States party to the Paris Convention.

40.

This priority is established by the filing, without the need for any subsequent registration of the design. This is expressed clearly in Article 4(A)(3) of the Paris Convention by the expression ‘whatever may be the subsequent fate of the application’, which may be found in a similar formulation also in Article 41(3) of the Designs Regulation. ( 8 )

41.

Mast-Jägermeister infers from this that a date of filing must be accorded after a very superficial examination, whilst a more extensive examination of the content is necessary only as part of the registration.

42.

Although this submission is new in relation to the proceedings before the General Court, it is nevertheless admissible since it does not alter the subject matter of the dispute but merely extends the grounds for the sought after interpretation of Articles 38 and 36(1) of the Designs Regulation. ( 9 )

43.

Indeed, in order to accord a date of filing pursuant to Article 38 of the Designs Regulation, it is not necessary for the application for registration of a design to satisfy all the requirements for registration. Article 38 refers precisely only to Article 36(1) and not to the entirety of the conditions for a registration. Accordingly, Article 46(3) allows certain deficiencies in the application to be remedied retrospectively, without calling the date of filing into question.

44.

However, Mast-Jägermeister fails to appreciate that the system of filing priority pursuant to the Paris Convention, which displays certain similarities with the principle of mutual recognition in EU law, also allows the State where the application is filed to require an unequivocal representation of the design.

45.

As EUIPO argues, it is clear from Article 4(A)(2) of the Paris Convention and Article 41(2) of the Designs Regulation that a filing is to recognised as giving rise to a right of priority where it is equivalent to a regular national filing under the national law of the State where it is made. That is to say any law, in particular EU law, is free to define certain requirements for a regular filing.

46.

It is true that Article 4(A)(3) of the Paris Convention and Article 41(3) of the Designs Regulation appear to restrict the regulatory discretion of the State where the application is filed. Under those provisions, by a regular national filing is meant any filing that is adequate to establish the date on which the application was filed in the country concerned. However, even if the regulatory powers of that State are thus restricted, the State where the application is filed must nevertheless be permitted to require an unequivocal representation of the design in order to accept a regular filing. If the representation were equivocal it would be unclear as to which design was actually being filed.

47.

The rule concerning the irrelevance of the outcome of the filing, on the other hand, is directed primarily at other legal systems in which the priority of the filing is to be claimed subsequently. They are not to lay down further requirements beyond an application accepted in the State where it is made, for example, by requiring successful registration.

48.

Consequently, the function of filing an application to establish a claim to priority does not mean that the clarity of the design is excluded from the scope of Article 36(1)(c) of the Designs Regulation.

49.

However, the need for an unequivocal representation of the design applied for is clear from the purpose of the filing.

50.

In this regard the General Court relies on two Court of Justice judgments on trade marks. In those judgments the Court of Justice emphasised that the registration and application for registration of a trade mark must enable the trade mark authorities and third parties to distinguish clearly which trade mark is being claimed. ( 10 )

51.

As regards the application for registration of a trade mark, the legislature has since included this in Articles 31(1)(d) and 4(b) of the Trade Mark Regulation. Under those provisions, an application for a European Union trade mark must contain a representation of the trade mark which allows the competent authorities and the public to determine with precision and clarity the subject matter of protection afforded to the proprietor of such a trade mark. This idea was not expressed so clearly in the earlier versions of the Trade Mark Directive ( 11 ) and was drafted more clearly when the possible forms of trade mark were expanded. ( 12 )

52.

In the abovementioned judgments the Court did not consider the particular function of filing and the date of filing, although a relevant rule on priority does exist in trade mark law in the form of Article 34 of the Trade Mark Regulation. ( 13 )

53.

Nonetheless, the Court’s arguments are convincing and can be applied without difficulty to the design.

54.

It is indeed true that there are considerable differences between the registered design procedure and the trade mark procedure so far as concerns the intensity of EUIPO’s examination. Before a trade mark is registered, EUIPO must examine the absolute and, possibly also the relative, grounds for refusing registration. On the other hand, the examination of the content of a design in the registration procedure under Article 47(1) of the Designs Regulation is limited to whether the design corresponds to the definition under Article 3 of the appearance of a product and whether public policy and accepted principles of morality have been respected. That does not, however, exclude a minimum examination by EUIPO of the application with regard to the clarity of its content in the course of the design procedure too.

55.

Firstly, the clarity of the representation is necessary precisely against the background of the right of priority which arises on filing. That is because priority should apply only to the design which was actually applied for. ( 14 ) An unclear application would not — contrary to the view of Mast-Jägermeister — necessarily be to the detriment of the applicant but at the same time give rise to a risk of excessive protection afforded by priority.

56.

Therefore, secondly, it is also necessary to refute Mast-Jägermeister’s argument that the deficiency objected to did not concern the distinguishability of the subject matter of the protection but rather the scope of the protection, which, however, is not the subject of the application proceedings, but could be resolved only in infringement proceedings.

57.

It is true that it is necessary in infringement proceedings to derive the scope of the protection from the representation of the design, having regard to Articles 10 and 19 of the Designs Regulation. However, that does not mean that the distinguishability of the representation is irrelevant at the filing stage.

58.

The application procedure should rather — also irrespective of the priority — at least provide other market operators with a minimal level of protection against an unclear application, so that they are not exposed unnecessarily to the risk of having to argue in court with the relevant applicant over the scope of his unclear application. ( 15 )

59.

And thirdly EUIPO rightly points out that the registration authorities also need a clear and unequivocal representation of the design for the examinations which they have to carry out. ( 16 )

60.

It may be that other legal systems are more generous in this regard in recognising an application — they have the freedom to be under Article 4 of the Paris Convention. However, EU law is not compelled to be as generous.

61.

More convincing in this case are Mast-Jägermeister’s objections to the order of the examination which the General Court outlines at paragraphs 35 and 36 of the judgment under appeal. There the General Court first requires an examination whether there is a design at all and whether it is contrary to accepted principles of morality before the more formal requirements under Article 36 of the Designs Regulation are examined.

62.

In particular, an examination of the compatibility of the design with public policy or accepted principles of morality would certainly go beyond determination of the date of filing pursuant to Article 38(1) and 36(1) of the Designs Regulation. In practical terms too it could be difficult to examine whether or not there is a design and it is consistent with public policy or accepted principles of morality if the representation thereof did not satisfy the qualitative requirements under Article 36(1) of the Designs Regulation.

63.

However, ultimately the resolution of the present case does not turn on this matter. These preliminary remarks of the General Court do not support its decision and therefore this argument is ineffective. ( 17 )

64.

Finally, in so far as Mast-Jägermeister insists that in the present case the representation of the design which was submitted is sufficiently clear, it should be recalled that, in accordance with Article 256(1) TFEU and the first subparagraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal is limited to points of law. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal. ( 18 )

65.

Whether or not the representation submitted is sufficiently clear despite the bottles depicted alongside the design is a question of fact. It is neither claimed nor evident that the General Court distorted the facts in examining this question. This argument is therefore inadmissible.

66.

All in all the General Court righty required that the representation of the design be precise as a condition for the accordance of a filing date pursuant to Articles 38(1) and 36(1) of the Designs Regulation. The appeal must consequently be dismissed as predominantly unfounded and otherwise inadmissible.

67.

In accordance with Article 184(2) of the Rules of Procedure, where the appeal is unfounded, the Court is to make a decision as to costs. Under Article 138(1) of those rules, applicable to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings

68.

Since Mast-Jägermeister has been unsuccessful and EUIPO has applied for costs, Mast-Jägermeister must be ordered to pay the costs.

69.

I therefore propose that the Court should: