European Union Intellectual Property Office (EUIPO) v The KaiKai Company

In her opinion delivered on 13 July 2023, Advocate General Ćapeta advised the CJEU to set aside a judgement by the General Court that found in favour of registered community design (RCD) applicant The KaiKai Company Jaeger Wichmann Gbr (‘KaiKai’) and recognised a claim to priority made within 12 months of an international application under the Patent Cooperation Treaty (PCT).  That decision by the General Court seemed to open up a loophole that allowed for a design to benefit from a priority period of more than the usual 6 months established by the Paris Convention for industrial designs, and also hinted at the possibility that designs may claim priority to patent applications more widely.  While it appears that the present recommendation would close the loophole in respect of the period for claiming priority, the reasoning of the opinion would support the notion that a design may claim priority to a patent application, which flies in the face of the EUIPO’s current approach to examining priority claims and will need consideration when deciding upon an IP filing strategy.

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