Judgment of the TGUE: Priority period for the registration of industrial designs based on a prior patent application

 The Paris Convention for the Protection of Industrial Property (“Paris Convention”) signed in 1883 establishes a series of general principles applicable to the different industrial property regimes, among which are the principles of territoriality and priority.

By virtue of the principle of territoriality, industrial property rights (patents, trademarks, industrial designs, etc.) have a limited geographical scope. In this way, in the event that the holder of a right wants to have protection in different countries, it is necessary to register the right in question in the corresponding territories.

The same Paris Convention regulates the right of priority, which allows all applications for industrial property rights made within a specific period on the same object to be understood as presented on the date of the first application. This implies, among other issues, that the events that occur after the submission of the first application do not affect subsequent applications, given that the relevant date for the purposes of analyzing the applications submitted is the first (provided that they have been submitted within the priority term).

In this post we will analyze the judgment of the General Court of the European Union (TGUE) in case T-579/19, which deals with different legal questions related to the right of priority and, in particular, on what is the term of Priority applicable to a Community design application based on a previous international patent application.

Schematically, and in what is relevant for the analysis of the case that is the subject of this entry, the Paris Convention regulates the following priority periods:

12-month priority period for patents and utility models;

6-month priority period for trademarks and industrial designs;

6-month priority period for utility models based on a prior patent application.

For its part, Regulation 6/2002, of December 12, 2001, on Community designs establishes a priority period of 6 months for applications for registration of Community design or utility model.

Background:

On October 24, 2018, The KaiKai Company (“KaiKai”) filed an application for multiple registration of twelve Community designs, under Regulation 6/2002, with the European Union Intellectual Property Office (EUIPO). . Within the framework of this application, KaiKai claimed for all the designs applied for a right of priority based on a previous international patent application, filed on October 26, 2017.

Although the registration of all the Community drawings requested was granted, both the examiner and the Board of Appeals of the EUIPO denied the claimed priority because the period of 6 months regulated in Regulation 6/2002 had been exceeded. This is based on the following arguments:

In the first place, the Chamber concluded that this specific matter should be analyzed in the light of the provisions of Regulation 6/2002, given that (i) it is an application for a Community design; and (ii) the Paris Convention does not take precedence over the European standard.

On the other hand, the Chamber understood that Regulation 6/2002 does not regulate a right of priority for a Community design application originating from a prior patent application, but that the Community law only confers this right of priority by virtue of applications previous community design or industrial model. However, adopting a broad interpretation of the concept "utility model", the Chamber decided that patent applications do fall within the scope of art. 41 of Regulation 6/2002 and, therefore, offer the applicant a priority period of 6 months. In any event, KaiKai submitted its application after this deadline.

Appeal to the TGUE:

The decision of the Appeals Chamber was later appealed by KaiKai before the TGUE based on the following allegations:

The company defended that, since Regulation 6/2002 does not contain a clear rule regarding the priority period derived from a previous patent application, the Appeals Chamber should have applied the Paris Convention, as the basis for Regulation 6/2002.

Furthermore, KaiKai maintained that the Paris Convention is governed by the principle that priority periods are determined on the basis of the earlier application, regardless of the nature of the right to which the subsequent application relates. Thus, considering that the Paris Convention provides that the priority period for a patent application is 12 months, this is the priority period that should have been taken into account when analyzing your application.

After analyzing the different arguments presented by the parties, the TGUE finally upheld the appeal filed by KaiKai:

The TGUE recognizes that exThere is a gap in the regulation of Regulation 6/2002 regarding the priority period applicable to a Community design application based on a previous international patent application. Thus, since the right of priority arises from the Paris Convention, it must be used to fill the gap in question.

The TGUE also maintains that the Paris Convention does not include any provision that specifically establishes a priority period in these circumstances. However, accepting KaiKai's thesis, the TGUE understands that it is the nature of the industrial property right requested in the first place that determines the duration of the priority period, regardless of the right that is requested later. This is so insofar as the previous right (i) generates the right of priority; and (ii) determines the birth and initiation of the right of priority. Therefore, the logic of the system implies that the duration of the right of priority also depends on the previous right.

On the other hand, it is true that art. 4.E) 1 of the Paris Convention establishes a concrete priority period of 6 months for industrial design applications based on a prior utility model application. However, the TGUE resolves that this provision is configured as an exception and that it should only be applied to the specific case (and, therefore, it does not affect previous patent applications).

For all the foregoing, the TGUE agrees with KaiKai and establishes that the Board of Appeal made an error in its decision given that the priority period applicable to the application for the set of Community designs was 12 months (because it originated by a previous patent application) and not 6 months.

In any case, this decision has been the subject of a new appeal that is pending before the Court of Justice of the European Union, so we will be pending the progress of this issue.