In Europe Design claims 12 months priority: How possible?

Can a registered Community Design claim conventional priority from an international (PCT) application? Can time limit for claiming conventional priority be more than six months?

In its decision of last April 14, 2021, the General Court of the European Union replied YES to both questions.

Here the case.

In 2017, the German company The KaiKai Company Jaeger Wichmann GbR (hereafter KaiKai) filed a PCT application No. PCT/EP2017/077469 on a sports device for supporting a handlebar for performing push-ups. 

Approximately one year later, on October 24, 2018, KaiKai filed a multiple community design application for 12 designs, on a sports device, claiming the priority of the PCT application. 

One of the 12 designs (source: Euipo database)

Strategically, claiming priority enables successive applications to be filed recognizing as the filing date the date the first application was filed. 

However, this is true if the applied time period requirements are met: twelve months from the first application in the case of patents, and six months from the first application in the case of industrial designs and trademarks. 

On 31 October 2018, the European Union Intellectual Property Office (EUIPO) informed The Kaikai Company that the multiple application had been accepted in its entirety, but that the claimed right of priority for all designs was refused: the community design application, in fact, was filed after the expiry of the 6-month priority community design deadline. 

It should be underlined that article 4 section E of the Paris Convention for the Protection of Industrial Property, clearly recognizes the interdependence of the rights in patents, utility models and industrial designs when claiming reciprocal priority:

“E. 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”. 

Kaikai design patent information  (source: Euipo database)

KaiKai filed an appeal, and the decision was issued on June 13, 2019 by the Board of appeal of the EUIPO: the Board rejected the KaiKai appeal.

KaiKai did not waver and filed a further appeal in front of the General Court of the European Union (EGC). 

As a first step, the General Court approved the EUIPO and the Board for acknowledging that a Community design may claim priority to a PCT application despite the absence of mention of patent applications in article 41 of the Community design regulation. Indeed, a PCT application can, in some contracting states, be considered as a utility model application.

Moreover, the court also found that article 4, section E, 1 of the PCPIP is a special rule, an exception to the principle that the nature of the earlier right is crucial to establish the duration of the priority period. 

Image of the patented bar

Accordingly, the EGC considered that the reasoning of the Board of Appeal was incorrect. The EGC held that the Board of Appeal should have based the time period on the nature of the earlier right claimed, the patent. 

Thus, the time limit for claiming priority from PCT application should be calculated as twelve months rather than six, as it would be in the case of priority from earlier industrial design application.