The design of a product remains one of the most vital elements in shaping a distinctive brand. It is central to brand communication, which is why companies devote significant time and resources to creating striking graphics that represent their products. Since product design is inseparable from brand communication, modern enterprises must integrate design strategy into their broader business plan. A combination of lines and colors, or any three-dimensional shape leaving a unique impression, may qualify as Industrial Design. Because design embodies a product’s essence and enhances its visual appeal, protecting it ensures a strong and distinct brand identity. It spans numerous items such as jewelry, lighting, packaging, textiles, technological goods, and even trademarks. Brands with remarkable, original designs are often viewed by consumers as industry leaders and trendsetters.
Design also plays a pivotal role in daily life, ensuring efficiency across industries and driving innovation in the creation of new goods. It is evident in fashion, shaping modern consumer trends, while also serving a social function by adapting everyday products to meet the needs of the elderly, the disabled, and children with special needs.
LANDMARK JUDGMENT
A review of the EGC’s decision in case T-579/19 from April 14, 2021, highlights the complexity and breadth of these rights. The ruling addressed the link between a patent’s priority rights and their extension to design priority rights.
Facts of the case
On October 24, 2018, The Kaikai Company Jaeger Wichmann Gbr (the applicant) filed several applications with the European Union Intellectual Property Office (EUIPO) for registration of gymnastic and sports equipment. The applicant relied on international conventions and treaties to claim priority. Why? Because strategically, claiming priority allows later applications to adopt the filing date of the first application in any of the PCPIP signatory countries. However, strict timeframes must be observed: twelve months from the date of the first application for patents, and six months for industrial designs and trademarks.
In this case, the applicant based its priority on an earlier international patent application (PCT), with identical graphic representations to the designs being registered. The intention was that the later application, filed beyond the six-month design priority window set by Article 41 of Council Regulation (EC) No 6/2002 on Community designs, should be considered as filed within the patent’s twelve-month priority period.
Article 4, Section E of the PCPIP recognizes the interconnection of patents, utility models, and industrial designs in asserting reciprocal priority:
Where an industrial design is filed in a country by a right of priority based on the filing of a utility model, the period of priority shall be the same as that fixed for industrial designs. Furthermore, it is permissible to file a utility model in a country by a right of priority based on the filing of a patent application, and vice versa.
The EUIPO rejected the priority claim, and the Board of Appeal (case R573/2019-3) confirmed the refusal, holding that both Regulation 6/2002 and the PCPIP impose a six-month period for design priority, regardless of the earlier right. The Board reasoned that although Article 41 of Regulation 6/2002 was silent on this matter, the PCPIP provisions filled the gap.
However, the EGC emphasized that the nature of the earlier right determines the priority period’s duration (as seen in TELEYE judgment T-128/99). If the start of the priority right and its duration both depend on the earlier right, then logically the period should also follow that earlier right. Article 4, Section E(1) of the PCPIP is an exception, but not applicable here. Thus, the EGC found that the Board of Appeal misinterpreted the rules. It held that the period should have been based on the nature of the earlier right—the patent—and applied the PCPIP in the absence of a clear provision in Regulation 6/2002.
Impact of the decision
This judgment will significantly influence corporate protection strategies, enabling companies to extend design protection by relying on the twelve-month priority period of a prior patent application.
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