The Grand Chamber of the EU Court of Justice (CJEU) has upheld EUIPO’s practice regarding priority for RCD applications, in its judgment in Case C-382/21 P KaiKai.
This case concerns a relatively technical issue which can have substantial implications for some owners of parallel rights in utility models and registered designs. Utility models are a right that flies even further under the radar than designs. They are not available in all territories (e.g. they are not available in the UK) and are particularly popular in Germany.
Reversing the decision of the EU General Court, the CJEU concluded:
“an international application filed under the PCT can form the basis of a right of priority, pursuant to Article 41(1) of Regulation No 6/2002, solely provided that the subject of the international application in question is a utility model and, second, the time period in which to claim that right on the basis of such an application is that of six months, expressly fixed in Article 41(1).”
The case was also notable as it was the first one the CJEU had accepted following the rule change in 2019, which makes it much harder to appeal EU General Court decisions.
Background to the priority period question
The RCD applicant in this case, The KaiKai Company Jaeger Wichmann GbR, applied to register 12 designs for gymnastic and sports apparatus and equipment on 24 October 2018, claiming priority on the basis of an international patent application filed at the European Patent Office on 26 October 2017.
EUIPO rejected the application as the priority date was more than six months prior to the application date. This decision was upheld by the Board of Appeal.
The EUIPO decision was based on Article 41(1) of the RCD Regulation, which states:
“A person who has duly filed an application for a design right or for a utility model in or for any State party to [the Paris Convention], or to the Agreement establishing the [WTO], or his successors in title, shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application.”
On 14 April 2021, the EU General Court accepted KaiKai’s argument that the Board of Appeal erred in finding that the priority period should be six months. It said that the relevant period should be 12 months as provided in Article 4 of the Paris Convention.
Overturning that decision o , the CJEU said:
“Article 4 of the Paris Convention does not allow priority to be claimed in respect of an earlier patent application when filing a subsequent design application, and therefore, a fortiori, does not lay down any rules on the time period prescribed to the applicant to that end. Thus, only an international application filed under the PCT relating to a utility model can give rise to a right of priority for a design application by virtue of that Article 4, within the period of six months referred to in section E, paragraph 1, thereof.”
What does this mean?
EUIPO described the judgment as “a pivotal moment for the priority regime of intellectual property rights” that affirms EUIPO’s practice on priority for RCD applications.
However, it may mean that EU member states that have allowed priority based on Article 4 of the Paris Convention, such as Germany, have to change their practice.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com