Case C-382/21 was primarily concerned with the claiming of priority from a PCT application for a Community design. There was a disagreement between the applicant, represented by Zimmermann & Partner, and the EUIPO regarding the applicability and interpretation of Article 41 of Regulation No. 6/2002. The European Union Intellectual Property Office (EUIPO) and the Board of Appeal of the EUIPO rejected the priority claim. The design owner appealed against the decision of the Board of Appeal (R 0573/ 2019-3 of 13.06.2019) to the General Court. Zimmermann & Partner conducted the proceedings for the plaintiff pro bono because fundamental legal issues required clarification.
In decision T 579/19, the European General Court (EGC) subsequently agreed with the plaintiff's legal opinion and found that Art. 41 of Regulation No. 6/2002 had a regulatory loophole that had to be supplemented with the principles laid down in Art. 4 of the Paris Convention. Even if the Union is not a member state of the Paris Convention, Articles 1 to 12 and 19 of the Paris Convention must be complied with by the Union as a member of the WHO pursuant to Article 2 TRIPS. These include Art. 4 of the Paris Convention, which regulates the priority of the various property rights and their respective priority periods. Based on Art. 4 of the Paris Convention, the EGC ruled that, according to the logic inherent to the priority system itself, the duration of the priority period is generally determined by the nature of the earlier right, since its application gives rise to the priority right (see also EGC TELEYE T 128/99). The EGC thus essentially confirmed the current German official practice, according to which a priority period of 12 months is granted for subsequent design applications based on patent applications.
The EUIPO appealed against the judgment of the General Court to the European Court of Justice (CJEU) and invited the European Commission to intervene in the proceedings. The present proceedings are the first to successfully pass through the new filter procedure pursuant to Art. 58 of the CJEU Statute and to be heard by the CJEU at all. The reason for this being that the proceedings raise "questions of importance for the unity, consistency or development of EU law", irrespective of design or priority law. In principle, the present proceedings concern the relationship between international law and Union law. Considering the importance of these issues, a 2 ½ hour oral hearing was held before the Grand Chamber of the CJEU on March 13, 2023, in which the plaintiffs' representatives, the EUIPO and the European Commission were able to further explain their respective legal positions. Advocate General Capeta subsequently published her Final Opinion on July 13, 2023, in which she essentially follows the legal opinion of the first instance plaintiff and the EGC with regard to the applicability of international law and its interpretative effect for European legal norms. It was only when it came to the interpretation of the Paris Convention and the calculation of the priority period that the Advocate General arrived at a different conclusion and therefore advised that the appeal be upheld in its entirety.
The CJEU now ruled on February 27,2024 that Article 41(1) of Regulation No. 6/2002 does not expressly refer to the Paris Convention. That it is the intention of the Union legislator to impose obligations to comply with the Paris Convention in accordance with the WTO agreements cannot be inferred from the mere fact that the wording of Art. 41 (1) of Regulation No. 6/2002 corresponds to the wording of Art. 4 of the Paris Convention. Consequently, the rules laid down in Art. 4 of the Paris Convention have no direct effect and are therefore not suitable for establishing rights for the applicant of an IP right.
The ruling of the CJEU also sets out the limits to the use of international treaties in the interpretation of Union law.
Accordingly, Regulation No. 6/2002 must be interpreted as far as possible in accordance with the TRIPS Agreement and the rules laid down in the Paris Convention; however, in the opinion of the Court of Justice, Article 41(1) of Regulation No. 6/2002 is clear and conclusive.
With regard to the interpretation of the Paris Convention, the CJEU ruled that the two types of cross-priority listed in Art. 4 Section E of the Paris Convention constitute an exhaustive regulation. Accordingly, it is only permissible that the application for a utility model can lead to a priority right for designs within the six-month period applicable to the latter, and that a patent application can lead to a priority right for the application for a utility model and vice versa.
This interpretation has an impact on the EU countries that apply the Paris Convention directly, as is the case, for example, in German official proceedings for subsequent design applications claiming priority of a foreign patent application.
The CJEU thus opposes the first instance decision of the General Court and partially the opinion of Advocate General Capeta, and provides a supreme court clarification on the limits of the interpretation of secondary EU acts in light of international agreements, as well as an interpretation of the priority claims regulated in Art. 4 of the Paris Convention for the first time.
Authors:
Jeannette Hellmann-Cordner (attorney-at-law in Berlin), Tim Lachmann (patent attorney in Berlin), Frank Steinbach (patent attorney in Berlin) / Zimmermann & Partner Patentanwälte mbB