The matter at hand

KaiKai filed an application for several Community Designs claiming priority, in respect of all those designs, based on an international patent application filed almost 12 months earlier.

The EUIPO refused the priority claims because the date of the design applications exceeded the term set out in Article 41(1) Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, allowing a right of priority in respect of the same design or utility model for a period of six months.

The General Court partly annulled the Board of Appeal decision. It held that ‘international patent applications’ indeed cover ‘utility models’ and that the period applicable to KaiKai’s claim for priority was not six months, but twelve months. The General Court reached this conclusion by considering that Article 41(1) Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs does not govern the question of the period for claiming the priority of a patent, so it resorted to Article 4 of the Paris Convention in order to fill the gap and Article 4(C)(1) Paris Convention provides a priority period for patents of twelve months.

The EUIPO appealed the decision before the ECJ.

The judgment of the ecj

First and with regard to the effects of the Paris Convention, the ECJ states that although the EU is not part of the Paris Convention, the EU is a member of the TRIPS Agreement, and Article 4 of the Paris Convention has been incorporated into the TRIPS Agreement.

Further, the ECJ emphasizes that it is settled case-law that, having regard to the nature and structure of the TRIPs Agreement, the provisions of that agreement do not have direct effect. Accordingly, Article 4 of the Paris Convention is not, for individuals, a right on which they may directly by virtue of EU law rely (paragraph 63).

In addition, the ECJ notes that Article 41(1) Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs makes no express reference to Article 4 of the Paris Convention. Consequently, the right of priority to file an application for a Community design is governed by Article 41 of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs (paragraph 65).

In that regard, the ECJ finds that the General Court erred in law by exceeding the interpretation of Article 41(1) Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, as this provision possesses explicit wording and an exhaustive nature. According to the ECJ and pursuant to the provision: “it follows unequivocally from the clear wording of Article 41(1) that only two categories of earlier application – namely (i) an application for registration of a design and (ii) an application for registration of a utility model – can form the basis of a right of priority for a subsequent application for registration of a Community design, solely within a period of six months as of the date of filing of the earlier application concerned” (paragraph 76). ECJ concludes that the absence of a priority right based on a patent application is not a gap in Article 41(1) Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, “but the consequence of the fact that that provision does not allow such a right to be based on that category of earlier applications” (paragraph 77).

Further, the ECJ also found that the interpretation of the General Court with regard to Article 4 of the Paris Convention erred in law. According to Article 4(C)(1), (2) and (4) of the Paris Convention only a subsequent application with the ‘same subject’ as an earlier application can enjoy a right of priority (paragraph 82). Article 4(E) of the Paris Convention, exhaustively sets out the situations in which a subject can sometimes enjoy more than one form of protection. More specifically, the provision provides “that a utility model application can give rise to a right of priority for a design application, in the period fixed for designs, namely six months, and, in paragraph 2 thereof, that a patent application can give rise to a right of priority for a utility model application and vice versa” (paragraph 84). Therefore, 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.