Does the Paris Convention allow cross-IP priority claims?

Priority claims for IP rights allow obtaining an earlier priority date for an IP application based on an earlier IP application in another country. For member states of the Paris Convention, Art. 4(1) Paris Convention provides this basic principle:

Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed.

Art. 4(E) Paris Convention allows priority claims for designs based on earlier utility model applications and for utility models based on earlier patent applications:

(1) Where an industrial design is filed in a country by virtue of a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs.

(2) Furthermore, it is permissible to file a utility model in a country by virtue of a right of priority based on the filing of a patent application, and vice versa.

Art. 4(E) Paris Convention begs the questions whether these are exceptions to a general rule that priority claims can only be based on identical types of IP rights or whether cross-IP priority claims are generally permissible. This is the question, which the Advocate General (AG) Tamara Ćapeta dealt with in her Opinion in case The KaiKai Company Jaeger Wichmann GbR (C-382/21 P).

Background

On 24 October 2018, KaiKai filed an application for the registration of twelve Community designs with EUIPO, claiming priority based on a PCT application filed on 26 October 2017. The EUIPO’s examiner refused the priority claim because the date of the filing of KaiKai’s international application exceeded the six months period set out in Art. 41(1) Community Design Regulation (“CDR”), according to which:

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 for the Protection of Industrial Property, or to the Agreement establishing the World Trade Organisation, 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.

KaiKai’s appeal was dismissed by the EUIPO Board of Appeal (‘BoA’).

KaiKai filed a further appeal to the General Court, which was successful. The General Court found that the EUIPO rightly held that an international application under the PCT can be relied upon in order to claim priority for a Community design application under Art. 41(1) CDR, provided that the subject matter of the two applications is substantively the same. However, EUIPO erred in applying a six months priority period, rather than a twelve months priority period. Art. 41(1) CDR provides a six months priority period only for utility models. KaiKai’s PCT application, however, concerned a patent. Art. 41(1) CDR does not mention patents but only designs and utility models. The General Court filled the legislative gap it found to exist by referring to Art. 4 Paris Convention, considering that the Paris Convention allows for priority claims between different types of IP rights. The priority period for patents is twelve months (Art. 4(C)(1) Paris Convention).

The EUIPO appealed to the CJEU and the Court, for the first time under the new appeal regime introduced in May 2019, admitted the appeal. It found that the matter has possible precedential value for future cases concerning priority rights not just in design matters but for all IP rights and that it raises important questions on the interplay of EU law and international agreements such as the Paris Convention.

The Advocate General’s opinion

AG Ćapeta first dealt with the question whether the Paris Convention is applicable in the EU. She observed that the EU is not a party to the Convention. The fact that all EU Member States are parties to the Paris Convention does not make it a part of the EU legal order. However, the EU is a party to the TRIPS Agreement. This agreement does not regulate priority rights but refers, in Art. 2(1), to Art. 1 through Art. 12 and Art. 19 Paris Convention. Therefore, the EU is bound by Art. 4 Paris Convention.

AG Ćapeta found that Art. 41(1) CDR does not govern the priority rights exhaustively but contains a gap with respect to earlier patents. This gap may be filled by referring to Art. 4 Paris Convention. The EUIPO’s argument that Art. 41(1) CDR is unambiguous and does not contain a gap was rejected by the AG, inter alia with the words:

As beauty is in the eye of the beholder, the level of unambiguity is in the eye of the interpreter.

AG Ćapeta then turned to the question whether Art. 4 Paris Convention allows a priority claim for a design application to be based on an earlier patent application. She argued, inter alia by referring to the Guide to the Application of the Paris Convention, that such cross-IP priority claims must be possible. In her opinion, it is sufficient that the substantive subject matter of the IP rights is identical. They do not have to concern the same type of IP. Since the purpose of the priority claims is to alleviate the territoriality of IP rights, the formal classification should be less important. There are also substantive overlaps between the object of protection under different types of IP rights.

Furthermore, utility models can form the basis for design applications according to Art. 4(E)(1) Paris Convention. AG Ćapeta submitted that, if a priority claim for a design can be based on a utility model application, presumably because of the overlaps between these rights, the same should be possible vis-à-vis patents because there can be similar overlaps between a design and a patent. The fact that Art. 4(E)(1) Paris Convention explicitly allows the priority claim for a design based on a utility model but does not mention patents is explained by the relative novelty of utility models in the Paris Convention at the time when this provision was introduced.

In AG Ćapeta’s view, the General Court erred, however, in applying a twelve months priority period instead of a six months period. Art. 4(C) Paris Convention grants a twelve months priority periods to patents and utility models, and a six months period to industrial designs and trademarks. The provision is silent on whether these periods depend on the earlier or on the subsequent right. Art. 4(E)(1) Paris Convention bases the priority period on the type of the subsequent right. AG Ćapeta argues that this is the basic rule, contrary to the findings of the General Court in the contested judgment. Therefore, the priority period is only six months and not twelve if a design application is based on an earlier patent application.

AG Ćapeta proposes

that the Court interpret the Paris Convention as allowing for the application for a subsequent design (including a Community design) to be based on a previous patent application, provided that there is a substantial identity of subject matter. The length of the priority period in such a case is six months, as attributed to industrial designs by the Paris Convention.

Comment

In this Kat’s opinion, the EUIPO’s position that cross-IP priority claims must be limited to those explicitly mentioned in Art. 41(1) CDR appears to be more convincing.

This wording of Art. 4(1) Paris Convention is not unambiguous as to whether the later filing must be the same type of IP as the earlier filing. However, if cross-IP priority claims were generally possible, the question is why Art. 4(E)(1) Paris Convention contains explicit rules for specific combinations. The novelty of utility models at the time of the introduction of this provision does not seem to be a strong argument because it does not answer the question why only these specific combinations were included in the Paris Convention and not also other combinations. A utility model could also overlap with a figurative mark. Why not also deal with this combination?

Furthermore, one of the purposes of priority claims is certainly to alleviate the territoriality principle. However, is it necessary to alleviate this principle with respect to different IP rights? A design has, by its nature, a different subject matter of protection than a patent. The fact that a patent application may include a design drawing capable of protection as a registered Community design does not change the different subject matter of both IP rights. They require different protection, if so desired by their owner. It requires entirely different legal and commercial considerations to decide whether to file a patent application in one country and a design application in another.

One further thought: If a “world patent right”, a "world design right" etc. existed, which protects a patent, design etc. in all countries at the same time with only one filing, would we still need priority claims at all? The main purpose of the priority claim (at least in trade mark matters) is to provide the applicant with a “period of reflection to decide whether he wants also to submit an application for registration of a European Union trade mark for that mark and for goods and services identical to those in respect of which that mark is filed or contained within the latter” (General Court, T-82/14). Should this period of reflection also extend to other IP rights even if the owner did not bother to file for such an initial right? Beyond that, there would be no need to alleviate the territoriality principle.

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