When deadline to take action before OHIM falls on non-working day in other member state

A recent case involving a Community design has provided an answer to the question of what happens when the deadline to take action before the Office for Harmonisation in the Internal Market (OHIM) falls on a non-working day in the EU member state where the action is executed.

The Community Designs Regulation (6/2002) provides the possibility of claiming priority from an earlier design filed in any state party to the Paris Convention or to the Agreement establishing the World Trade Organisation, provided that priority is claimed within six months of filing the first application.

The applicant gave instructions to file a Community design and claim priority. The deadline for claiming priority expired on the day of a public holiday in Croatia, and the applicant (a EU entity, but not Croatian) wished to file a Community design via the Croatian Patent and Trademark Office (PTO) to take advantage of the priority date.

According to Croatian law, when a deadline falls on a non-working day, the relevant action should be taken on the following working day.

In the present case, the Community design with priority (six months from the date of filing of the first application, plus one non-working day in Croatia) was filed via the Croatian PTO, which transmitted the application to OHIM.

OHIM refused the priority date, with no written explanation apart from the following: “the priority claim regarding the design cannot be allowed as more than six months have elapsed”. An additional explanation was given over the phone (verba volant): only a non-working day in Spain (as OHIM is located in Alicante) can postpone the deadline to the next working day. As OHIM explained, a non-working day in any other EU member state is no reason for postponement, as OHIM is not supposed to take into consideration all non-working days throughout the European Union.

This ruling has come as a surprise, as it seems that applicants who file Community designs in Spain (directly with OHIM or via the Spanish Patent and Trademark Office) are privileged in cases such as the one at hand.

Tanja Rajic and Ivan Kos, PETOŠEVIĆ, Zagreb

PETOŠEVIĆ Croatia represented the applicant in this case