Beverly Hills Teddy Bear Company v PMS International Group Plc

For an unregistered Community design to receive protection, the first disclosure event must take place within the territory of the Community. It is insufficient that an event outside the Community could reasonably have become known to the relevant specialised circles within it. Novelty is assessed when protection comes into being under art.11 of the Design Regulation. An earlier disclosure outside the Community may therefore destroy novelty if it was sufficiently known in the Community before that date. The issue was not acte clair, and a reference to the CJEU was appropriate.

BHTB claimed protection for six toy designs as unregistered Community designs, registered Community designs and copyright works. PMS sought summary judgment on the unregistered-design claims.

Five designs had first been exhibited at a trade fair in Hong Kong in October 2017 and later exhibited in the EU in January 2018. The parties agreed that the Hong Kong event could reasonably have become known to the relevant specialised circles within the Community. The application raised two questions: whether an event giving rise to UCD protection must occur within the Community, and whether novelty is assessed when UCD protection arises or at an earlier date.

1. Construction of art.11. The event giving rise to first disclosure under art.11 must occur within the territory of the Community. The words “within the Community” in art.11(1) could not be treated as surplusage. Article 110(a)(5) supported that interpretation by clarifying that a design not made public within the Community does not enjoy UCD protection.
2. Novelty under art.5(1)(a). Novelty falls to be assessed on the date when UCD protection comes into being under art.11. A design first disclosed outside the EU before that date may lack novelty where the event could reasonably have become known to the relevant specialised circles within the Community.
3. Relationship between arts.5, 7 and 11. Article 7 establishes a rebuttable presumption that a design has been made available to the public when a qualifying disclosure event has occurred. The relevant events and exceptions are substantially aligned with art.11. The CJEU had confirmed that an art.7 event need not occur in the EU for the presumption to operate when novelty is assessed under art.5.
4. Reference. The court did not consider the two questions sufficiently clear to be acte clair. Both parties supported a reference under art.267 TFEU. Given the widespread interest in the questions and the circumstances following notification under art.50 TEU, the court proposed referring two questions to the CJEU concerning the territorial requirement in art.11 and the date for assessing novelty under art.5(1)(a).