Designs practice update: EU Court of Justice upholds Advocate General’s opinion on strict rules for design priority

Background

In our previous article (here), we discussed the opinion of Advocate General Capeta in EUIPO v The KaiKai Company Jaeger Wichmann. That opinion was provided following an appeal against the General Court’s ruling, which had held that the 12-month patent priority period could be applied to an EU design application claiming priority from a prior-filed PCT.

By way of background, the European Intellectual Property Office (“EUIPO”) had rejected a priority claim by KaiKai Company for a Community Design application based on an earlier PCT patent, on the basis that it exceeded the 6-month timeframe for claiming priority under Article 41(1) of Regulation No 6/2002 (the “Community Designs Regulation”).

On appeal by KaiKai, in April 2021, the General Court (“GC”) considered the Paris Convention and applied the 12-month patent priority period to KaiKai’s case.

The EUIPO appealed the GC’s ruling up to the Court of Justice (“CJEU”), which concluded that:

• The EUIPO’s interpretation of Article 41(1) of the Community Designs Regulation was correct, meaning it is the 6-month priority period relating to Community Design applications that is to be applied, not a 12-month priority period which applies to patents. This was in agreement with the AG’s opinion;
• However, the GC had misapplied the Paris Convention, which doesn't allow for priority of a design based solely on a preceding PCT patent. In any event, the Paris Convention could not have direct effect within the EU legal system – and the GC had incorrectly sought to give it direct effect; and
• The CJEU confirmed that a PCT patent cannot be used to claim priority for a later-filed EU design, nor could applicants claim an extended 12-month priority period for a Community Design application even if priority was claimed from a utility model under the PCT.

In summary, the Court has overturned the GC’s ruling and upheld the EUIPO’s decision (following the AG’s opinion) that KaiKai’s priority claim was invalid.

Key points of the judgment and reasoning

Strict interpretation of Article 41(1)

Article 41(1) of the Community Designs Regulation specifies prior design applications and utility models as the sole permissible grounds for claiming priority for a subsequent design application. The Court emphasised the clear and exhaustive nature of the Article, limiting priority options to design applications and utility model applications. A Community Design application can only claim priority from an earlier application filed under the PCT if:

• The earlier application concerns a utility model (not a patent); and
• The priority claim is made within 6 months of the initial filing date.

On a strict interpretation, Community Designs therefore cannot directly claim priority solely based on patent applications, even if they relate to the same product. While acknowledging the TRIPS Agreement’s role and its incorporation of the Paris Convention, the Court stressed that the clear and express wording of the Community Designs Regulation took precedence in this specific context.

The Paris Convention

Whilst priority could be claimed, the relevant period was strictly limited to 6 months in line with all other priority claims for design applications under the Convention.

The Paris Convention’s Article 4 (which allows for IP priority claims between signatory states) does not have direct effect within the EU legal system and applicants cannot directly rely on it for claiming priority. In its judgment, the CJEU acknowledged the hierarchy of legal instruments. EU regulations such as the Community Designs Regulation take precedence within the EU legal framework, followed by international agreements like the TRIPS Agreement, which incorporates the Paris Convention. Whilst the regime which governs the right of priority for registered Community designs had to be interpreted, as far as possible, consistently with the Convention, international law could not override the express language of EU regulations.

In any event, the CJEU found the GC had misapplied the Paris Convention. Citing Article 4 of the Paris Convention, the Court reiterated that only applications with the "same subject matter" can claim priority from each other. Patents and designs are distinct categories of IP rights. While the Paris Convention allows for situations where one invention can enjoy multiple forms of protection, Article 4(E) exhaustively outlines these scenarios and claiming priority from a patent application for a Community Design application is not included.

Implications for rights holders

This decision highlights the importance of meticulous planning, timely filings, and appropriate IP protection mechanisms which are crucial to protecting designs that are protected by several overlapping rights.

The decision also clarifies that, regardless of the priority source (whether a prior design or utility model application), the timeframe for claiming priority for a Community Design is 6 months from the priority date. Patent applications cannot be used as a source for claiming priority in Community Design registrations, nor is the priority period extended where the priority-founding application is a utility model. Therefore, rights holders must carefully consider the distinct priority periods associated with different IP rights in formulating their filing strategies, taking into account that patent applications benefit from a longer 12-month priority window compared to the 6-month limit for Community Design applications.

Design law purists may ponder about the rationale for the Community Designs Regulation recognising utility models (which, like patents, protect technical inventions) as a valid form of priority for registered designs (which concern a product’s appearance, not its functionality). Nevertheless, this possible ‘loophole’ in the priority framework may prove valuable for designers who hold dual protection in the technical and aesthetic elements of their products.

Co-authored by Honor Kunisch White, Trainee Solicitor