Court of Justice upholds EUIPO’s stance in landmark case

On 27^th February 2024, the Court of Justice of the European Union, in a Grand Chamber composition, upheld the first appeal under the 2019 rule change, which drastically narrows the scope for appeals against General Court decisions in intellectual property matters (EUIPO v The KaiKai Company Jaeger Wichmann GbR,C-382/21 P).

This case focused on the explicit conditions under which the owner of an international application, filed under the Patent Cooperation Treaty (PCT), is entitled to claim priority for a subsequent Registered Community Design (RCD). This judgment marks a pivotal moment for the priority regime of intellectual property rights as stipulated in the Paris Convention and addresses the capacity of right holders to claim such rights before the EUIPO and EU courts directly from international agreements.

The Court upheld the EUIPO's appeal entirely, affirming the EUIPO's guideline that priority for an RCD, based on an earlier PCT-international application, can only be claimed under specific conditions. These include the requirement that the earlier PCT application pertains to a Utility Model (not a Patent) and that the claim is made within six months.

Furthermore, the Court endorsed EUIPO’s view that such priority claims are governed exclusively by Article 41(1) of the Community Designs Regulation. It clarified that right holders could not directly derive their priority claims from Article 4 of the Paris Convention, as the TRIPS agreement does not provide for a 'direct' effect, and the Paris Convention does not allow for design application priority claims from a prior patent application.

This judgment is a significant development for intellectual property law within the EU and a testament to the EUIPO's commitment to ensuring clarity and consistency in the application of EU intellectual property law, reinforcing the established legal framework and guidelines.

About the Authors

This article has been authored by Jan Killips Wright, Senior Advisor - Regulated Industries & Compliance and Dr Simon Mangion, Regulatory and Business Advisor. Contact us here or on [email protected] for more information.