Praesidiad Holding BVBA & Anor v Zaun Limited

For proceedings instituted before the end of the Brexit transition period, Article 86(5) of the CD Regulation remains effective where required by Article 67(1) of the Withdrawal Agreement and section 7A of the European Union (Withdrawal Agreement) Act 2020. Article 86(5) is jurisdictional because it limits the subject-matter competence of Community design courts, despite also operating as a procedural bar.

It does not apply directly to a UK re-registered design. However, such a design is in substance a clone of, and derives from, the parent Community design. Issue estoppel may therefore prevent the same validity issues being re-litigated under the Registered Designs Act 1949.

The claimants brought infringement proceedings concerning a registered Community design and later a UK re-registered design. The defendant had previously challenged the Community design’s validity before the EUIPO. That challenge was pursued through the EUIPO Board of Appeal, the General Court and the Court of Justice, ultimately without success. The proceedings before the High Court had been commenced before IP completion day, but the validity counterclaims were pleaded afterwards.

The High Court struck out the counterclaims, holding that Article 86(5) barred the Community design counterclaim and that the same result followed from res judicata or abuse of process in relation to both rights: [2024] EWHC 1549 (Pat). The appeal concerned the effect of the Brexit legislation, the scope of Article 86(5), and whether common-law estoppel principles also barred the challenge to the UK re-registered design.

The appeal was dismissed. Arnold LJ gave the judgment, with which Peter Jackson and Underhill LJJ agreed.

1. Community design counterclaim. Article 86(5) of the CD Regulation is a provision regarding jurisdiction. It qualifies the subject-matter jurisdiction, or competence, of Community design courts under Article 81(d). Its classification is not altered because it may also be described as a procedural bar. It must receive an autonomous interpretation as a matter of European law.
2. Effect of the Withdrawal Agreement. The proceedings were pending proceedings because the infringement claim had been instituted before IP completion day. Article 67(1) of the Withdrawal Agreement, given domestic effect by section 7A of the European Union (Withdrawal Agreement) Act 2020, required the relevant jurisdictional provisions of the CD Regulation to continue to apply. That obligation prevailed over the exclusion of Article 86(5) in paragraph 9(2) of Schedule 1A to the Registered Designs Act 1949. The High Court therefore had no jurisdiction to entertain the renewed Community design counterclaim.
3. UK re-registered design. Article 86(5) did not apply to the UK re-registered design. It concerned registered Community designs, whereas the UK re-registered design was a distinct national right governed by the domestic jurisdiction of the High Court and the Registered Designs Act 1949.
4. Issue estoppel. The UK re-registered design was nevertheless in substance the same right as the Community design. It had the same substantive validity conditions, conferred the same substantive infringement rights apart from territorial scope, and derived from the Community design. The defendant relied on the same grounds of invalidity for both rights. The validity issues had therefore already been determined between the parties, and issue estoppel precluded their re-litigation.
5. Common-law principles. It was unnecessary to decide whether paragraph 9(2) displaced res judicata or abuse-of-process principles. The court observed that this was difficult to infer from the statutory wording and that the common-law principles were not coextensive with Article 86(5). If different prior designs had been relied upon, issue estoppel might not have applied to novelty and overall impression, although Henderson v Henderson abuse of process might still have been relevant.

1. Court of Appeal (Civil Division): Appeal dismissed.
2. High Court of Justice, Patents Court: Zacaroli J struck out the counterclaim by order dated 22 July 2024, for the reasons in [2024] EWHC 1549 (Pat).