CJEU issues important decision on design priority claims.

In what will likely be a landmark case for several years to come, the Court of Justice of the European Union (CJEU) has confirmed the conditions under which a registered Community design application is able to claim priority from an earlier international application filed under the Patent Cooperation Treaty (PCT).

Article 4 of the Paris Convention for the Protection of Industrial Property permits applicants for various IP rights to claim priority from a preceding application within a prescribed period. This priority claim can be made within a 12-month period from the filing date of the original application for patents and utility models provided it is for the same invention, and six months for designs and trademarks.

Key issue and findings

The issue at hand in the appeal case of European Union Intellectual Property Office (EUIPO) v The KaiKai Company Jaeger Wichmann (Case C-382/21 P) was whether a registered Community design application could validly claim priority to a PCT patent application (ie, an “international patent application”), and within what period.

The CJEU confirmed, in a decision handed down on 27 February 2024, that registered Community design applicants cannot utilise the 12-month period for claiming priority for either utility models or patents, and in any event cannot claim priority from an earlier international patent application (Case C-382/21 P, Paragraph 98). A registered design application can, however, claim priority from an earlier utility model filed under the PCT, but only within a six-month period (ibid). As a result, KaiKai’s priority claim to its international patent application was deemed invalid, notably altering the earliest priority date for its design filing.


KaiKai filed a multiple application for the registration of 12 Community designs with the EUIPO on 24 October 2018, claiming priority based on an international patent application with a filing date of 26 October 2017. The EUIPO rejected the priority claim on the grounds that the patent application was filed more than six months before the design application.

In March 2019 KaiKai appealed against this decision, but the Third Board of Appeal of the EUIPO dismissed the appeal, stating that the priority claim could be made only within six months of the patent application. KaiKai then lodged an action against this decision at the General Court, seeking its annulment and recognition of the priority claim. This was a relatively rare case of an appeal being admitted to the General Court, which receives only appeals pertaining to an issue that is “significant with respect to the unity, consistency or development of Union law” (Article 58(a), Statute of the Court of Justice of the European Union).

The General Court upheld KaiKai’s appeal, stating that the Board of Appeal had erred in its ruling that the period applicable to KaiKai’s claim for priority was six months. The court annulled the decision of the Board of Appeal.

In the present case, the EUIPO successfully appealed against the judgment of the General Court, with the CJEU providing the ruling mentioned above with regard to priority.

Does this change anything?

This decision is consistent with the existing wording of the EUIPO guidelines on design priority claims (EUIPO Design Examination Guidelines, “Priority”):

A priority claim based on a previous patent application will in principle be rejected. However, the priority of an international application filed under the [PCT] can be claimed, since Article 2 of the PCT defines the term 'patent' in a broad sense that covers utility models.

It will be worthwhile for both patentees and design applicants to bear in mind the specific conditions under which a priority claim can be made between these two types of applications. Some jurisdictions, such as Germany and France, offer utility model protection, whereas others, including the United Kingdom, do not. Having a clear patent and design filing strategy from the outset is therefore of particular importance in light of this CJEU decision.

This article first appeared in WTR Daily, part of World Trademark Review, in March 2024. For further information, please go to www.worldtrademarkreview.com.

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