Case C‑382/21 P
European Union Intellectual Property Office (EUIPO)
v
The KaiKai Company Jaeger Wichmann GbR
Judgment of the Court (Grand Chamber) of 27 February 2024
(Appeal – Intellectual property – Community designs – Patent Cooperation Treaty (PCT) – Agreement on Trade-Related Aspects of Intellectual Property Rights – Paris Convention for the Protection of Industrial Property – Article 4 – Regulation (EC) No 6/2002 – Article 41 – Application for registration of a Community design – Right of priority – Priority claim based on an international application filed under the PCT – Time period – Interpretation consistent with Article 4 of that convention – Limits)
1. International agreements – Paris Convention for the Protection of Industrial Property – Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) – Direct effect – None – Interpretation consistent with EU law – Limits
(TRIPs Agreement, Art. 2(1))
(see paragraphs 59-64, 68, 70, 74)
2. Community designs – Application for registration – Right of priority – Impossibility for an operator to rely directly on the Paris Convention
(Council Regulation No 6/2002, Art. 41(1))
(see paragraph 69)
3. Community designs – Application for registration – Right of priority – Clear wording and exhaustive nature of the provision of EU secondary legislation on the right of priority
(Council Regulation No 6/2002, Art. 41(1))
(see paragraphs 74-77)
4. Community designs – Application for registration – Right of priority – Priority claim based on an application lodged under the Patent Cooperation Treaty – Priority period – Possibility of claiming priority in respect of an earlier international patent application when filing a later design application within a period of 12 months – Not included
(Patent Cooperation Treaty, Art. 2(i), (ii), (vii); Council Regulation No 6/2002, Art. 41(1))
(see paragraphs 78-85)
Résumé
In upholding the appeal brought by the European Union Intellectual Property Office (EUIPO) against the judgment of the General Court in The KaiKai Company Jaeger Wichmann v EUIPO (Gymnastic and sports apparatus and equipment), (1) the Grand Chamber of the Court of Justice provides clarifications as to the distinction between the direct effect of international agreements and the interpretation of secondary legislative acts in conformity with such agreements, and rules on the limits of such consistent interpretation.
On 24 October 2018, the applicant at first instance, The KaiKai Company Jaeger Wichmann GbR, applied to EUIPO for the registration of 12 Community designs, claiming a right of priority on the basis of an international patent application filed under the Patent Cooperation Treaty (PCT) (2) on 26 October 2017.
EUIPO granted the application for registration but refused the right of priority, on the ground that the date of the earlier filing was more than six months prior to the date of the application for registration. Article 41(1) of Regulation No 6/2002 (3) in fact provides that a person who has duly filed an earlier application for a design right or for a utility model is to enjoy, for the purpose of filing a subsequent application for a registered Community design, a right of priority of six months from the date of filing of the first application. EUIPO found that, even though an international application filed under the PCT could, in principle, form the basis for a right of priority under Article 41(1) of Regulation No 6/2002, given that the broad definition of the concept of ‘patent’ in Article 2 of the PCT also included the utility models referred to in Article 41(1) of that regulation, the claim of such a right of priority was also subject to a period of six months, which had not been complied with in the present case.
By its judgment of 14 April 2021, the General Court annulled the EUIPO decision. It ruled that there was a gap in Article 41(1) of Regulation No 6/2002, in that it did not fix the time period for claiming priority for an ‘international patent application’ in the context of a subsequent design application. The General Court considered that the purpose of that provision was to ensure the consistency of that regulation with the obligations stemming from Article 4 of the Paris Convention (4) and, therefore, it was necessary to fill that gap by applying that Article 4. The General Court found, in essence, that pursuant to Article 4, it was the nature of the earlier right that determined the duration of such a priority period, with the result that that period was 12 months. It therefore concluded that EUIPO had erred in law by finding that the period applicable to the claim for priority at issue was six months.
On 23 June 2021, EUIPO brought an appeal against that judgment, raising a single ground of appeal alleging infringement of Article 41(1) of Regulation No 6/2002. By way of that ground of appeal, EUIPO takes issue, in essence, with the General Court for having directly applied Article 4 of the Paris Convention, disapplying the clear and exhaustive provisions of Article 41(1) of the regulation, in order to replace them with a misinterpretation of Article 4 of that convention.
By document lodged on the same date, EUIPO requested that its appeal be allowed to proceed, in accordance with the third paragraph of Article 58a of the Statute of the Court of Justice. By order of 10 December 2021, (5) the Court of Justice decided to allow the appeal to proceed.
Findings of the Court
In the first place, as regards the effects of the Paris Convention in the legal order of the European Union, first of all, the Court recalls that, although that convention was not concluded by the European Union, the rules set out in certain articles thereof, including Article 4, have been incorporated into the TRIPs Agreement, (6) which was itself concluded by the European Union. Consequently, those rules must be regarded as producing the same effects as those produced by the TRIPs Agreement.
Next, the Court states that, having regard to their nature and structure, the provisions of the TRIPs Agreement do not have direct effect. Furthermore, Article 4 of the Paris Convention also does not come under the two exceptional situations in which private individuals may rely directly on the provisions of the WTO Agreements before the Courts of the European Union. On the one hand, Article 41 of Regulation No 6/2002 in fact makes no express reference to Article 4 of the Paris Convention. On the other hand, Article 41 does not seek to implement, in the legal order of the European Union, a specific obligation entered into in the context of the WTO Agreements. On the contrary, that regulation is in fact the expression of the EU legislature’s intention to adopt, in respect of one of the industrial property rights covered by that convention, an approach specific to the legal order of the European Union, by establishing a specific system of unitary and indivisible protection for Community designs on the territory of the European Union, of which the right of priority provided for in that Article 41 forms an integral part.
The Court infers that the rules set out in Article 4 of the Paris Convention do not have direct effect and, accordingly, are not such as to create, for individuals, rights on which they may directly rely by virtue of EU law. Consequently, the right of priority to file an application for a Community design is governed by Article 41 of Regulation No 6/2002, without economic operators being able to rely directly on Article 4 of the Paris Convention.
Finally, the Court nevertheless points out that, since the TRIPs Agreement is binding on the European Union and, accordingly, takes precedence over EU secondary legislation, the latter must be interpreted, as far as is possible, in accordance with the provisions of that agreement. It follows that Regulation No 6/2002 must be interpreted, as far as is possible, in accordance with the rules set out by the articles of the Paris Convention, including Article 4 thereof, which are incorporated into the TRIPs Agreement.
In the second place, the Court of Justice finds that the General Court erred in law, in that it manifestly exceeded the limits of a consistent interpretation of Article 41(1) of Regulation No 6/2002 and proceeded, in fact, to apply directly Article 4 of the Paris Convention, as interpreted by that court, to the detriment of the clear wording of Article 41(1) of that regulation and in disregard of the exhaustive nature of the latter provision.
It in fact follows unequivocally from the clear and exhaustive wording of Article 41(1) that, first, an international application filed under the PCT can form the basis of a right of priority, pursuant to that provision, only in so far as the subject of the international application in question is a utility model and, second, the period for claiming that right of priority on the basis of such an application is six months, expressly set in that provision.
In the third place, as regards the General Court’s interpretation of Article 4 of the Paris Convention, under which that provision allows the priority of an earlier ‘international patent application’ to be claimed when filing a later design application within a period of 12 months, the Court of Justice holds that that interpretation is also vitiated by errors of law.
It follows from a combined reading of sections A, C and E of Article 4 that the latter does not allow priority to be claimed, and therefore, a fortiori, does not lay down any rules on the time period prescribed to the applicant to that end. Thus, only an international application filed under the PCT relating to a utility model can give rise to a right of priority for a design application by virtue of that Article 4, within the period of six months referred to in Article 4(E)(1).
In the light of all of those considerations, the Court upholds the single ground of appeal, annuls the judgment of the General Court, and rules on the action at first instance by dismissing it.