‘Rightsholders be aware’: Design firm loses key priority patent case in EU
EUIPO wins appeal to reverse General Court decision | Court of Justice ‘concludes there are no loopholes’ in community design regulation | ‘Protect designs from the beginning’, say lawyers.
The EU Intellectual Property Office (EUIPO) has succeeded in its appeal against a General Court decision to grant patent priority rights for a German design firm.
The outcome highlights the importance of design protection in patent rightsholders’ IP strategy.
The Court of Justice of the European Union (CJEU) upheld the EUIPO’s appeal to oppose The KaiKai Company’s claim to priority for a community design of 12 months from an international patent application.
The CJEU—sitting in a Grand Chamber composition—delivered its judgment yesterday, February 28, in EUIPO v The KaiKai Company Jaeger Wichmann.
The case was the first appeal to be admitted by the CJEU under a new rule (established in 2019) that limits further appeals against decisions of the General Court in IP matters. To be admitted, the case must raise issues that are relevant for the unity, consistency or development of EU law.
The case sheds light on a complex legal context concerning the intersection of three regulatory areas of IP.
First, it sits under the umbrella of the priority regime for IP rights provided for in the Paris Convention, which protects all industrial IP.
Then it concerns the conditions under which the owner of an international patent application made under the Patent Cooperation Treaty (PCT) can claim priority for subsequent Registered Community Designs (RCDs).
Case history
The KaiKai Company, which provides industrial design and visual services to businesses worldwide, submitted 12 applications for RCDs in October 2018.
The Munich-based company claimed, for all of these designs, a priority based on an international patent application (PCT/EP2017/077469) filed, under the PCT, in October 2017 before the European Patent Office (EPO).
A year later, an EUIPO examiner approved KaiKai’s application in its entirety, but denied the priority right claimed for all the drawings or models, because the date of the international application filed under the PCT was more than six months earlier than the date of filing of the application for registration in question.
Jump to March 2019, and KaiKai lodged an appeal with the EUIPO against the examiner's decision.
But in June that year, the Third Board of Appeal of the EUIPO dismissed the appeal, “finding that the examiner had correctly applied Article 41(1), of Regulation No. 6/2002, which faithfully reproduces the provisions of the Paris Convention,” according to the judgment.
The Board of Appeal concluded that KaiKai could only claim a right of priority on the basis of the 2017 international application, filed under the PCT within a period of six months from the date of its filing.
Relevance of international alignment
“This decision is not surprising,” said Philipe Kutschke, a partner at Bardehle Pagenberg in Munich, “but it is good to have this issue finally decided by the Grand Chamber of the Court.
“It is pleasing to see that the court confirmed what probably most practitioners already applied anyway. Rights holders should be aware of this decision and may have to adjust their IP strategy, giving more weight to design protection from the very beginning.”
The decision “shows the importance of thoroughly examining whether or not priority claims are available or not”, he told WIPR, and “nicely shows the long history and relevance of international alignment in the field of IP.
“It is not enough to know national law and EU law, because one always has to consider the basis and context of these regulations, namely international treaties.”
And, although the decision is not surprising, its “consistent application of the rules regarding priority claims—as well as the Grand Chamber’s clarifying statements regarding the differences between the different protective rights—are certainly relevant for the unity, consistency or development of Union law,” he said.
No legislative gaps
Bartłomiej Kochlewski, a partner at SK+ Siekierzyński Kochlewski, noted that the CJEU concluded that Article 41(1) of Regulation 6/2002 on Community Designs “is exhaustive and does not have gaps or loopholes, which need further interpretation.”
This followed the General Court’s conclusion that there is a legislative gap, which should be filled by applying Article 4 of the Paris Convention, he explained.
The CJEU also confirmed that the Paris Convention does not have a direct effect on the EU legal order, Kochlewski told WIPR. The decision “closed possibilities to seek further cross-IP priority claims” and confirmed that the time limit is six months as set out in Article 41(1).
“Finally, it upheld the EUIPO’s granting practice in respect of Community Designs. The consequence is such that only design or utility model applications can be the basis for a priority claim in a later community design application.
“In this sense, patent applications may not be relied on, with the exception of PCT applications, because utility models fall within the broad definition of Article 2(ii) of the PCT,” he pointed out.
Full endorsement
The EUIPO said in a press release that “the Court of Justice confirmed the EUIPO’s position (also reflected in the EUIPO Design Guidelines) that the priority right for a later RCD based upon an earlier PCT-international application can only be claimed under the Community Designs Regulation (i) if that earlier PCT-international application concerns a utility model (but never a patent), and this (ii) within a deadline of six months.
“At the same time, the CJEU fully endorsed EUIPO’s arguments that (i) such priority right is exclusively regulated by Article 41(1) of the Community Designs Regulation, (ii) that right holders cannot directly base their priority claims upon Article 4 of the Paris Convention (the TRIPS agreement lacking such so-called ‘direct’ effect), and (iii) the Paris Convention does [not] in any case provide for priority rights to be claimed for a design application from a prior patent application.”
Kochlewski said he “tends to agree with the CJEU’s interpretation that cross-IP priority claims should be limited to those mentioned in Article 41(1) of the Regulation”.
“Due to the fact the wording of Article 41(1) of the Regulation 6/2002 is exhaustive, it should be read in such a way that only a design or a utility model application can be relied on to claim priority of a subsequent RCD.”
Patent applications are excluded, however, with the exception of PCT applications because as per the broad definition under Article 2 (ii) of the PCT also cover utility models, he explained.
“This means that there is only a six month priority period to be claimed—just like the EUIPO held from the beginning of this case.”
“Another aspect worth noting,” added Kochlewski, “is that this is yet another CJEU verdict handed down by the CJEU in 2024 (following Audi v GQ, C-334/22) in which the opinion of the Advocate General was not really followed.
“In both of those cases the CJEU in a way dealt with mutual relations of different regimes of EU law—designs and patents and trademarks and designs.”
