CJEU: The Paris Convention does not allow cross-IP priority claims

The Court of Justice of the European Union (‘CJEU’) held – in its recent judgment The KaiKai Company Jaeger Wichmann GbR (case C-382/21 P) – that the Paris Convention does not allow cross-IP priority claims in general, thus disagreeing with the Advocate General’s earlier Opinion (The IPKat here).

As a reminder, Art. 4(1) Paris Convention provides:

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 cross-IP 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.

Background

On 24 October 2018, The KaiKai Company Jaeger Wichmann GbR (‘KaiKai’) filed an application for the registration of twelve Community designs with the European Union Intellectual Property Office (‘EUIPO’), claiming priority based on a Patent Cooperation Treaty (‘PCT’) patent application filed on 26 October 2017. The EUIPO’s examiner refused the priority claims because the date of the filing of KaiKai’s design applications exceeded the six-month 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's 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, the EUIPO erred in applying a six-month priority period, rather than a twelve-month priority period. Art. 41(1) CDR provides a six-month priority period only for utility models. KaiKai’s PCT application on the other hand 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 admitted the appeal. 

The CJEU’s decision

The CJEU sided with the EUIPO and set aside the General Court’s judgment.

The Court analysed the relevance of the Paris Convention for EU law. Although all EU Member States are parties to the Paris Convention, the EU is not. However, the EU is a member of the TRIPS Agreement, which – by virtue of Art. 2(1) TRIPS Agreement – incorporates various provisions of the Paris Convention, including the latter’s Art. 4. The TRIPS Agreement does not have direct effect, meaning that it does not create individual rights and it is not a legal standard with which measures of the EU institutions must comply. Nevertheless, since the TRIPs Agreement is binding on the EU, it takes precedence over EU secondary legislation and the latter must be interpreted as far as possible in accordance with the TRIPS Agreement.

Further, the PCT must be considered because all EU Member States are party to it. According to Art. 1(2) PCT, the PCT is without prejudice to the rights provided for by the Paris Convention.

Unlike the General Court and the Advocate General, the CJEU considered the wording of Art. 41(1) CDR to be unequivocal and clear. Priority for a design can only be claimed within six months on the basis of an earlier application for a design or utility model. The judges also found that Art. 41(1) CDR is exhaustive and does not contain a gap by not mentioning earlier patent applications. The provision does not allow a priority right for a design to be based on a patent application.

Therefore, a priority right can be based on a PCT application only if the latter’s subject is a utility model. In this case, the time period to claim priority is six months.

The CJEU also found that the General Court misinterpreted Art. 4 Paris Convention. By referring to the wording of said provision and the Guide to the application of the Paris Convention, which is not binding but contributes to the interpretation of the Paris Convention, the judges held that the subsequent application must have the ‘same subject’ as the earlier application on which the priority claim is based.

Art. 4(E) Paris Convention sets out exhaustively the situations in which cross-IP priority rights can be claimed. Therefore, a design application cannot claim priority of an earlier PCT patent application.

Comment

The CJEU’s judgment is clear and straightforward, just as the wording of the provisions it interpreted. Priority claims can only be based on the same intellectual property right, unless cross-IP priority claims are explicitly allowed. 

Picture is by Alexandra_Koch and used under the licensing terms of pixabay.com.