When Deadline to Take Action before OHIM Falls on Non-Working Day in Other Member State

PETOŠEVIĆ Croatia has recently handled a Community Design case that provided an answer to the question of what happens when the deadline to take action before the OHIM falls on a non-working day in the EU member state where the action is executed.

The Community Design regulation prescribes the possibility of claiming priority for an earlier design filed in any state party to the Paris Convention or to the Agreement establishing the World Trade Organization, provided that priority is claimed within six months of filing the first application.

PETOŠEVIĆ Croatia received 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 client (a EU entity, but not Croatian) wished to file a CDR via the Croatian PTO, to take advantage of the priority date.

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

Indeed, the CDR with priority (six months from the date of filing of the first application + one non-working day in Croatia) was filed via the Croatian PTO, which transmitted the application to the OHIM.

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

This ruling has come as a surprise, as it seems that the applicants who file the CDR (CTMR) in Spain (directly with OHIM or via the Spanish PTO) are privileged in cases like the one we recently had.

By: Tanja Rajic, Ivan Kos

For more information, please contact Tanja Rajic or Ivan Kos at our Croatia office.