Case T‑579/19

The KaiKai Company Jaeger Wichmann GbR

v

European Union Intellectual Property Office

Judgment of the Court (Third Chamber), 14 April 2021

(Community design – Multiple application for registration of Community designs representing gymnastic and sports apparatus and equipment – Right of priority – Article 41 of Regulation (EC) No 6/2002 – Application under the Patent Cooperation Treaty – Article 4 of the Paris Convention for the Protection of Industrial Property – Priority period)

1. Community designs – Application for registration – Right of priority – Application accompanied by a claim of priority – Claim based on an application under the Patent Cooperation Treaty – Whether permissible

   (Council Regulation No 6/2002, Art. 41(1); Patent Cooperation Treaty, Art. 2(ii))

   (see paragraphs 47-51)

2. Community designs – Application for registration – Right of priority – Application accompanied by a claim of priority – Claim based on an application under the Patent Cooperation Treaty – Priority period

   (Council Regulation No 6/2002, Art. 41(1); Paris Convention for the Protection of Industrial Property, Art. 4(E)(1); Patent Cooperation Treaty, Art. 2(ii))

   (see paragraphs 64, 68, 74-77, 79-85)

Résumé

On 24 October 2018, the applicant, The KaiKai Company Jaeger Wichmann GbR, applied to the European Union Intellectual Property Office (EUIPO) for the multiple registration of 12 Community designs representing gymnastic and sports apparatus and equipment. It claimed a right of priority based on an international patent application filed on 26 October 2017 under the Patent Cooperation Treaty ( 1 ) (‘the PCT’).

EUIPO refused that right of priority because the date of the earlier filing was more than six months prior to the date of the multiple application. Article 41(1) of Regulation No 6/2002 ( 2 ) provides, for the purpose of filing an application for a registered Community design, a right of priority of six months from the date of filing of an earlier design right or utility model. EUIPO found that the concept of a utility model should be interpreted to include international patent applications, but that that broad interpretation had no effect on the prescribed six-month priority period.

An action for annulment was brought before the Court, which annulled EUIPO’s decision and, for the first time, interpreted Article 41(1) of Regulation No 6/2002 in relation to the right of priority.

Findings of the Court

In the first place, the Court points out that, according to the definition set out in the PCT, patent applications filed under the PCT cover utility models. That does not mean that the concepts of ‘patent’ and ‘utility model’ are the same, nor that the concept of ‘utility model’ includes that of ‘patent’. The Court therefore finds that the PCT does not distinguish between the different rights through which the various States in question protect inventions. Accordingly, the Court holds that, although the wording of Article 41(1) of Regulation No 6/2002 does not expressly refer to a right of priority claimed on the basis of a patent, EUIPO was entitled to take international patent applications into consideration in the context of that article. That broad interpretation is in keeping with the overall scheme of the PCT, which seeks to ensure that equivalent protection is afforded to utility models and patents.

In the second place, the Court observes that Article 41(1) of Regulation No 6/2002 is silent on the matter of the priority period resulting from an international patent application. Accordingly, the Court finds that, in order to interpret that provision, it is necessary to look to the legislation underlying that right of priority, namely Article 4 of the Paris Convention. ( 3 )

In that regard, the Court finds that Article 4(E)(1) of the Paris Convention provides that the priority period prescribed for the later right prevails where that later right is a design right and the earlier right is a utility model. The Court finds that this is a special rule constituting an exception to the general rule that stipulates that the length of the priority period is determined by the nature of the earlier right.

The Court points out that the difference in the way in which patents and utility models are treated under that provision can be explained by the difference in the length of their respective application procedures, since utility models are registered and published following a brief formal examination, whereas patent applications are generally not published until the expiry of the 12-month priority period.

The Court therefore concludes that EUIPO erred in finding that the period applicable to the claim for priority of the international patent application in relation to the filing of the application for registered Community designs was six months.

( 1 ) Patent Cooperation Treaty, concluded in Washington on 19 June 1970 and last modified on 3 October 2001 (United Nations Treaties Series, vol. 1160, No 18336, p. 231).

( 2 ) Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1).

( 3 ) Paris Convention for the Protection of Industrial Property, signed in Paris (France) on 20 March 1883, last revised in Stockholm (Sweden) on 14 July 1967 and amended on 28 September 1979 (United Nations Treaties Series, vol. 828, No 11851, p. 305).