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The CJEU’s recent judgement makes it clear that cross-priority claims are not allowed in general and priority claims are only applicable for intellectual property in the same category.

Background

The KaiKai Company Jaeger Wichmann GbR (‘KaiKai’) filed a multiple design application for the registration of 12 community designs with the EUIPO on 24 October 2018, claiming priority based on a patent application (PCT/EP2017/077469) filed on 26 October 2017.

The priority claim was refused by the EUIPO Examiner as the date of filing of the international application fell outside the six-month period set out in Art.41(1) Community Design Regulation.

KaiKai maintained its priority claim and appealed to the EUIPO’s Board of Appeal (BoA).

The BoA dismissed the appeal and KaiKai subsequently filed a further appeal to the General Court (GC).

The GC’s Decision

The GC sided with the EUIPO and upheld that as long as the subject-matter of the applications is substantively the same, a community design application under Art.41(1) CDR can claim priority based on a PCT patent application.

The GC, however, ruled that the EUIPO erred in applying a six-month priority period as KaiKai’s PCT application concerned a patent. While Article 41(1) CDR explicitly states that utility models enjoy a six-month priority period, there was no mention of patents. The GC thus referred to Art.4 Paris Convention and considered that the Paris Convention allows for cross-priority claims between different types of intellectual property rights, therefore the twelve-month period for patents should be applied.

The EUIPO appealed to the CJEU.

The CJEU’s Decision

The CJEU admitted the appeal and analysed the relevance of the Paris Convention for EU law. While its member states are parties to the Paris Convention, the EU itself is not. The TRIPS agreement, however, is binding on the EU and it incorporates various provisions of the Paris Convention. In summary, the TRIPS Agreement takes precedence and EU secondary legislation must be interpreted in accordance with the TRIPS Agreement.

The CJEU found the wording of Art.41(1) CDR to be clear, in that a design may only claim priority within a six-month period based on an earlier application for a design or utility model, and the provision does not allow a design to claim priority rights based on an earlier patent application. Unless the priority claiming subject is a utility model, only then can it claim priority from a PCT patent application within a six-month period.

The GC was also found to have misinterpreted Art.4 Paris Convention. In view of this provision and the Guide to the Application of the Paris Convention, the CJEU held that the priority claiming application must have the same subject as the earlier application. Further, situations where cross-IP priority rights are permitted have been set out explicitly in Art.4(E) Paris Convention.

In summary, a design application claiming priority of an earlier PCT patent application is not permitted.


Our articles are for general information only. They should not be considered specific legal advice, which is available upon request. All information in our articles is considered to be accurate at the date of publishing.

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