What are “public policy” and “accepted principles morality” in EU design law?

According to Art. 9 of Design Regulation (EC) No 6/2002, a design right shall not subsist in a design that is contrary to public policy or to accepted principles of morality. An equivalent provision is also included in Design Directive 98/71/EC. While there is a vast jurisprudence on the subject regarding trade marks [commented here and here by The IPKat], this Kat has decided to look at the few interpretations of this in connection with design case law.

First, EUIPO Design Guidelines on the matter are very concise. The EUIPO applies the concepts of “public policy” and “accepted principles of morality” as explained in the Trade Mark Guidelines. According to the Trade Mark Guidelines, “public policy” and “accepted principles of morality” are two different concepts that often overlap. This division was confirmed by the Court of Justice of the European Union (CJEU) in case C‑240/18 P “Fack Ju Göhte” [commented by The IPKat here and here].

Accepted principles of morality

The concept of “accepted principles of morality” refers to the fundamental moral values and standards to which a society adheres at a given time. The EUIPO Guidelines explain that while this basis of objection concerns subjective values, they must be applied as objectively as possible by the examiner. This category of objection includes blasphemous, racist, or discriminatory designs. However, as the CJEU explained for trade mark matters, it is insufficient for the sign concerned to be regarded as being “in bad taste”.

The same approach was adopted by the German Federal Patent Court in 10 W (pat) 713/02. The case concerned the registration of a German design referred to as “bottle in the shape of a sperm (male sperm cell)”, which is shown at the top of the post.

The German Patent and Trade Mark Office (DPMA) had refused the design registration as contrary to accepted principles of morality. The case was based on Art. 7(2) of the German Design Act in force prior to implementation of Design Directive 98/71/EC (Art. 7(2), too, prohibited registration of designs that are contrary to public order and accepted principles of morality). DPMA found the design pornographic because it depicts sexual processes, believing that relevant public would find the design repulsive and upsetting.

The German Federal Patent Court disagreed with DPMA. It reasoned that violation of accepted principles of morality occurs only if the design conveys “a discriminatory impression that violates human dignity”. According to the court, the design it issue will not offend the moral feelings of the public, ruling that --

“[t]he sight of a sperm-shaped bottle may be distasteful or even offensive to some. But there are probably only a few who feel discriminated against or violated in their human dignity.”

Public policy

The assessment of “public policy” is based on objective criteria. “Public policy” is the body of all legal rules that are necessary for the functioning of a democratic society and the state of law. This category may, for instance, include symbols that are considered unconstitutional in a given Member State (such as the swastika in Germany or the Soviet coat of arms in Central European countries).

National courts are, however, divided with regards to design protection of state symbols. In 2017, the Paris Appeal Court denied design registration for an image that contains blue and red lines, between which there is a drawing of a woman, who wears a hat and a blue-white-red cockade (case No 16/23487). First the French Patent and Trade Mark Office, and then the Paris Appeal Court, both found that this design is an image of Marianne (an allegorical symbol of the French Republic, which is protected under Art. 6ter of the Paris Convention).

According to the Paris Appeal Court, the association of the elements used in the claimed design leads to an obvious risk of confusing it with an official symbol. It is thus contrary to public order.

A different approach was taken by the German Federal Court of Justice in a series of cases, decided in 2003-2004. They were also based on Art. 7(2) of the previous German Design Act.

In case I ZB 29/01, the applicant sought to register a design for a keychain in the shape of a one-euro coin. In case I ZB 27/01, the applicant sought to register a design for cups depicting German currency. Case I ZB 15/03 concerned a design for road signs crossed by several red or black lines. The Federal Court of Justice confirmed that the three designs were valid.

In all three cases, the DPMA had refused to register these designs as contrary to public order. In cases I ZB 29/01 and I ZB 27/01, the DPMA drew an analogy with the legislation on trade marks, which prohibits the use of state emblems and other state symbols, and which also contains a reference to Art. 6ter of the Paris Convention. In I ZB 15/03, the DPMA also made an analogy with the legislation on trade marks and with the German Road Traffic Regulation, which prohibits the placement without authorisation of road signs in public places.

In all of these cases, the Federal Court of Justice defined a design being contrary to public order as an “infringement of the principles of public or economic life or of the fundamental principles of the legal system." With regards to Art. 6ter of the Paris Convention, the court indicated that these provisions apply only to trade marks and their scope cannot be unreasonably extended to designs.

The court also reminded that Art. 6ter aims to prohibit the registration and use of state emblems, since their use as trade marks might violate the state's right to control the symbols of its own sovereignty and mislead the consumer as to the origin of goods bearing such a mark. At the same time, Art. 6ter does not contain a general ban on the commercial use of state emblems.

Regarding the Road Traffic Regulation, the court indicated that citizens are only prohibited from installing road signs in public places. The actual road signs are freely available, and the relevant authorities even encourage citizens to use such road signs to regulate the movement of vehicles on private parcels. 

Thus, unlike the EUIPO Design Guidelines, the German Federal Court of Justice concluded that the legal protection of trade marks and of designs have different purposes. Namely, trade mark protection is meant to guarantee the origin of goods and services, while designs protect the appearance of a product. As such, the approach taken with respect to trade mark law does not necessarily apply to designs.