Priority claims: notion of ‘same design or utility model’

Priority claims: notion of ‘same design or utility model’ 11th Liaison Meeting on Designs Alicante 20 November 2012 Arnaud Folliard-Monguiral, ICLAD

The Office Practice: only formal requirements are checked • Whether the priority is claimed within 6 months of filing of the first application; • Whether the priority is claimed with the application or within one month of the filing date; • Whether the details of the previous application and the copy of the previous application are submitted in due time (within 3 months of the filing date or of the receipt of the declaration of priority); • Whether the previous application concerns a design or a utility model;

The Office Practice: only formal requirements are checked • Whether the previous application was filed in a country which is member of the Paris Convention, WTO or in another State provided there is a reciprocity agreement; • Whether the previous application is a first filing; • Whether the proprietor is the same or whether a transfer document establishes the RCD applicant’s right to claim the priority of a previous application originally filed by another applicant.

Validity of priority claims • The validity of priority claims can be challenged in the context of invalidity proceedings if a third party challenges the validity of such a priority claim or if the holder challenges the effects of the disclosure of a design, for the purpose of Articles 5, 6, 7 and 25 (1)(d) CDR, where this disclosure occurred within the priority period

Art. 41 CDR • A person who has duly filed an application for a design right or for a utility model (…) shall enjoy, for the purpose of filing an application for a registered Community design in respect of the same design or utility model, a right of priority of six months from the date of filing of the first application • Such a requirement is absent from Art. 4A CUP

Is the test for the ‘same design’ identical to the ‘novelty’ test? RCD (colours) Previous application (black and white)

Is the test for the ‘same design’ identical to the ‘novelty’ test? RCD (black and white) Previous application (colours)

Is the test for the ‘same design’ identical to the ‘novelty’ test? Previous application (whole saucepan) RCD (handle alone)

OHIM’s proposed approach • A priority claim relating to the ‘same design or utility model’ requires identity with the corresponding Community design without addition or suppression of features. • Immaterial details may be ignored

Priority claim: a two-fold objective (i) conferring on the RCD applicant immunity from the effects of any disclosure or any other application for registration of an identical or similar design made by third parties during the priority period for the purpose of applying Art. 5, 6 and 7 CDR (see Art. 43 CDR)

Priority claim: a two-fold objective (ii) conferring protection with a retroactive effect as from the date of filing of the first application, for the purpose of applying Art. 22 and 25(1)(d) CDR (see Art. 43 CDR + Art. 4(B) CUP : acts of use of a design made during the priority period ‘cannot give rise to any third-party right or any right of personal possession’)

A valid priority claim therefore allows the RCD holder to request cessation of such use of a later design which started during the priority period • Consequence: a ‘same design’ requires the ‘same scope of protection’ as the previous application the priority of which is claimed • Assimilation of both designs is therefore required

General Court, 15 November 2001, T-128/99, TELEYE • ‘The objective pursued is to assimilate a subsequent application for registration of a given trade mark to the original application for that mark, so far as concerns the rights of the applicant’ (para. 39) • ‘Thus, Article 29 CTMR implies that the subject-matter of the application for a Community trade mark is identical to that of the earlier application (…)’ (para. 50)

THANK YOU.

Priority claims: notion of ‘same design or utility model’