Praesidiad Holding BVBA & Anor v Zaun Limited

Where a validity challenge to an EU registered design was finally determined by the EUIPO in proceedings connected with pending UK infringement proceedings, the challenge could not be re-litigated in the UK. Article 86(5) of the Community Designs Regulation continued to apply through Article 67 of the Withdrawal Agreement, despite its omission from the transitional domestic provisions. The omission did not limit the direct effect of the Withdrawal Agreement.

In any event, the EUIPO was a tribunal of competent jurisdiction for English res judicata purposes. The common law doctrines of res judicata and abuse of process were not implicitly excluded. The same result applied to the derivative re-registered UK design, which followed the fortunes of the original EU design.

The claimants owned a registered Community design for fencing posts. After the defendant commenced invalidity proceedings before the EUIPO, the claimants brought UK infringement proceedings, which were stayed pending final determination of the EU proceedings.

The EUIPO ultimately upheld the design’s validity. Following the UK’s departure from the EU, the defendant served a counterclaim challenging the validity of both the original registered Community design and the derivative re-registered UK design.

The claimants applied to strike out the counterclaim. The issues were whether Article 86(5) of the Community Designs Regulation continued to apply to the pending UK proceedings, whether the domestic transitional legislation had disapplied statutory or common law res judicata, and whether the EUIPO decision bound the parties in relation to the re-registered design.

1. Article 86(5). Article 86(5) was a provision regarding jurisdiction within Article 67 of the Withdrawal Agreement. It applied to proceedings instituted before the end of the transition period. Its substantive effect was to deprive the court of jurisdiction to determine a repeated invalidity counterclaim involving the same parties, subject matter and cause of action.
2. Transitional legislation. Paragraph 9(2) of Schedule 1A to the Registered Designs Act 1949 omitted Article 86(5) from the provisions expressly continued for pending proceedings. That omission did not expressly disapply Article 86(5), and could not be read as contradicting the direct effect given to Article 67 by section 7A of the European Union (Withdrawal) Act 2018. The secondary legislation had to be construed, where possible, consistently with the enabling power in section 8B and so as to avoid an ultra vires result. Article 86(5) therefore continued to apply.
3. Common law res judicata. Independently, the defendant was precluded from re-litigating invalidity. The EUIPO had jurisdiction to determine the validity dispute and was a tribunal of competent jurisdiction for English law purposes. Article 86(5) reflected an existing common law principle; its statutory operation did not imply that the common law doctrines had been excluded.
4. The omission of Article 86(5) from paragraph 9(2), even if treated as an implied statutory disapplication, was insufficient to disapply the established doctrines of res judicata and Henderson v Henderson abuse of process. Paragraph 9A, which gave domestic effect to final EUIPO invalidity decisions in relation to derivative re-registered designs, reinforced that conclusion.
5. The re-registered design derived wholly from the registered Community design and followed its fortunes. A counterclaim concerning the re-registered design therefore related to the same subject matter and cause of action and involved the same parties. Alternatively, the common law doctrines applied because the same issue of invalidity had been finally litigated, or could have been litigated, in relation to the original design.
6. The defendant’s counterclaim for declarations of invalidity of both designs was struck out.