Opinion in Case C-382/21 P EUIPO v The KaiKai Company Jaeger Wichmann

Thursday 13th July 2023

Opinion in Case C-382/21 P EUIPO v The KaiKai Company Jaeger Wichmann

(Intellectual property)

In 2018, The KaiKai Company Jaeger Wichmann Gbr (“KaiKai”) filed a multiple application for the registration of gymnastic and sports equipment as twelve Community designs and claimed priority. EUIPO refused the priority claim because the date of the filing of KaiKai’s international application exceeded the six-month period set out in the EU legislation.

KaiKai lodged an appeal against that decision, considering, that the applicable priority period was twelve months, not six months, according to the Paris Convention. The Third Board of Appeal of EUIPO dismissed that appeal in 2019 and thus refused to recognise the right of priority in the application submitted by Kaikai.

By judgement, the General Court annulled the decision of the Third Board of Appeal of EUIPO in 2021. It considered that EUIPO had erred in applying a six-month priority period rather than a twelve-month priority period. Kaikais international application under the PCT could be characterised as an international application for a patent, not only for a utility model and that the EU-Law is silent as to the priority period arising from an application for a patent. In order to fill that legislative gap, the General Court held that account must be taken of the Paris Convention (international law).

EUIPO lodged the present appeal against the judgment of the General Court. In EUIPO’s understanding, the Paris Convention does not have direct effect in the EU legal order. It claims that the General Court filled the (non-existent) gap in the EU legislation by giving direct effect to the Paris Convention. The Court is thus invited to clarify when an international agreement has direct effect and whether it can have interpretative effect if it lacks direct effect.

Background Documents C-382/21 P