European Court of Justice (ECJ) – Clarity of representation of a design (C-217/17 P)

European Court of Justice (ECJ) – Clarity of representation of a design (C-217/17 P)


In the present case, on 5 July 2018, the Court addressed the delicate issue of the representation of a design in the context of an application for a Community registration (C-217/17 P Mast-Jägermeister SE v European Intellectual Property Office (EUIPO).

On 17 April 2015, the applicant applied to the EUIPO for the registration of two Community designs for cups (Class 07.01 Locarno Agreement).

When examining the applications in question, the examiner first proposed that the words “bottles” be added to the two designs because the representations submitted included not only the said cups but also bottles, while specifying that the cups and bottles belonging to different classes, the multiple application should be divided.

Then the examiner informed the applicant that she could also file new views “in which the requested characteristics would be delimited by dotted lines or colored borders“.

As the latter had not, following numerous exchanges with the examiner, regularized its applications (filing of new views or addition of the mention “bottles“), no filing date could be assigned to them.

Before the Court of Justice of the European Union, the applicant argued, in particular, on the basis of Articles 36 and 38 of Regulation No 6/2002 and Articles 4 and 10 of Regulation No 2245/2002, that the assignment of a filing date “should only depend on an examination of the representation of the design in terms of its physical capacity to be reproduced“. It also stressed the collateral legal effects of the lack of a filing date, in particular with regard to the right of priority.

For the Court” (…) the literal, teleological and contextual analysis of Article 36(1)(c) of Regulation 6/2002 leads to the conclusion that this provision must be interpreted as requiring that the representation of a design for which registration is sought must make it possible to clearly identify this design, which is the subject of the protection covered by the application“.

As this clear identification of the design in question was not provided to the examiner, the applications for registration could not be granted as an application for a registered Community design.

This decision recalls the problem of the nature of the signs constituting a trademark, which was referred to in a judgment of 12 December 2002 (Sieckmann-C-273/00) and according to which the Court of Justice of the European Union ruled that the graphic representation of the mark “must be complete in itself, easily accessible and intelligible“.