Please enable JavaScript.
Coggle requires JavaScript to display documents.
Grounds for Refusing Registration, Examples, Screenshot 2024-12-01 at 19…
Grounds for Refusing Registration
Public Policy / Morality
Definition
Design are excluded from protection if they are contrary to public order or morality
Prevents registration of designs promoting harmful, offensive, or unlawful behavior.
Legal Basis
Article 9 CDR
Article 8 DD
Key Principles
Public Policy
Focuses on protecting public safety, order, and welfare.
Designs linked to criminal behavior, violence, or exploitation are contrary to public policy.
Morality
Refers to ethical principles shared across society.
Subjective and influenced by cultural, historical, and social contexts.
EU-wide consensus: Certain symbols, terms, or representations are inherently offensive.
Criteria for Exclusion under Public Policy and Morality
Similar to trademark law, the provision may apply to designs that are manifestly obscene or repulsive or offensive to particular groups of the public.
Key Case Law
La Mafia se sienta a la mesa
Facts
Spanish restaurant chain "La Mafia se sienta a la mesa" applied for an EU trademark for its name and logo.
Italy opposed the trademark, arguing it glorified the Mafia, trivialized crime, and violated public policy and morality (Article 7(1)(f) EUTMR).
The EUIPO annulled the trademark registration, and the case was appealed to the EU General Court.
Legal Question
Does the trademark "La Mafia se sienta a la mesa" violate public policy and morality under Article 7(1)(f) EUTMR?
Procedure
EUIPO Proceedings
Italy opposed the trademark; the EUIPO annulled it.
General Court Appeal
The chain argued the term "Mafia" was used humorously to evoke Italian culture.
The Court ruled the term inherently invoked organized crime, harming public policy and morality.
Legal Analysis
Article 7(1)(f) EUTMR prohibits trademarks against public policy or morality.
Arguments
Restaurant: The name was metaphorical and humorous, focusing on Italian culture.
Italy: "Mafia" cannot be separated from its association with organized crime and victim suffering.
Court's Decision
The term "Mafia" trivialized organized crime and was offensive, breaching public policy and morality.
Outcome
The General Court upheld the EUIPO's annulment of the trademark.
So far, no pertinent jurisprudence has been reported on the EU level.
'Must Fit' Exception
Legal basis
Article 7(2) DD
Article 8(2) CDR
Definition
A (Community) design shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact from and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function.
Designs
are not protected
if the product needs to be interconnected with other products to perform a technical function
Examples
Car parts
Printer cartridges
Exception to the 'must fit' exception (The Lego Exception)
Legal basis
Article 7(3) DD
Article 8(3) CDR
Definition
Designs
are protected
if the product serves the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system
Technical function
purpose
1) Preventing hampering of
innovation
2) Preventing of hindering of
interoperability of products of different makes
legal basis
Art. 8 (1) CDR
"Design rights shall not subsist in features of appearance of a product which are solely dictated by its technical function"
There is no definiton of "technical function"
Autonomous interpretation. Rules derived from Recital 10 to the CDR
Technological innovation should not be hampered by granting design protection to features dictated solely by a technical function. It is understood that this does not entail that a design must have an aesthetic quality... Consequently, those features of a design which are excluded from protection for those reasons should not be taken into consideration for the purpose of assessing whether other features of the design fulfil the requirements for protection.
Element 1: Design features are determined by the technical function
Element: 2: There must be no aesthetic meaning
Linder v. Fransson (2018)
the words "
Solely dictated by the technical function
" do not mean that the feature in question must be the only means by which the product's technical function can be achieved
Exceptionally abstract!
Art. 7 (1) DD
Case Law
Doceram v. CeramTec
legal basis
Art. 8 (1) CDR
Case facts
Doceram argued that CeramTec has made an infringement on design of weld centring pins which are produced by Deceram
Ruling
German Court of Appeal ruled that perception of objective observer is decisive in interpretation of Article 8 (1) CDR
Contrary to that, the CJEU Stated that the assessment must be made by a competent body (an expert)
CJEU: Technical function must be the only factor explaining why certain features defining product's appearance are chosen. In such a case the design doest not have protection
Explanation: in case a design feature does not have aesthatical meaning, the design doest not enjoy protection.
Case-by-case evaluation
The national courts must take into account all objective circumstances of the case in order to determine whether the features of the products concerned are dictated solely by the technical fucntion
Existance of alternative designs does not play a role in determination
Overlap with Law on Trade marks
1 more item...
Papierfabriek Doetinchem BV (C-684/21)
Case facts
Alleged design infringment of a paper packaging device
legal basis
Art. 8 (1) CDR
Ruling
"... the fact that the design of the product allows for a multicolour appearance cannot be taken into account in the case where that multicolour appearance is not apparent form the registration of the design concerned."
The design features must be explicitely included in the registration request (colour, shape, etc.)
Otherwise, the feature will not be taken into considerations by the Court
Question
Can a multicolour appearance affect the assessment of whether the design is solely dictated by the technical function?
Optional grounds for refusal
Legal basis
Article 11(2) DD
(a) if a distinctive sign is used in a subsequent design
(b) if the design is a unauthorised use of a copyright protected work
(c) if the design is a improper use of any of the items listed under Article 6b of the Paris Convention
Any Member State
may
provide that a design shall be refused registration, or, if the design has been registered, that it shall be declared invalid:
Examples
K'nex
Lego
Mecanno
