Attack of the clones: exploring the difficulties of attacking UK registered designs cloned from earlier EU registered designs

In this article, Paul Taylor and Lloyd Lane from our IP & Media team examine the recent Court of Appeal decision in Praesidiad Holding BVBA v Zaun Ltd and the wider implications of attacking an EU right before attacking the corresponding cloned UK right.

It has long been established that a party who has tried to invalidate a UK intellectual property right (like a trade mark or design) at the UK Intellectual Property Office (UKIPO) and failed, can’t use the same argument in court, as they will be estopped. In this case the Court of Appeal confirmed that this also applies where a party fails to invalidate an EU right at the European Union Intellectual Property Office (EUIPO) and then seeks to invalidate the EU right and the cloned UK right in UK court proceedings.  

Background

The registered designs in question are owned by Praesidiad and relate to fence posts:

The proceedings between Praesidiad Holding BVBA and Zaun Ltd straddled the date on which the UK formally left the EU (31 December 2020). The case was complicated by the implications of Brexit on the enforceability and effect of EU decisions in the UK.

Prior to Brexit: Zaun had attacked Praesidiad’s Registered Community Design right but failed.

After Brexit: Praesidiad issued proceedings in the UK for infringement of their Registered Community Design (RCD) and UK Re-Registered Design (UKRRD) design equivalent.

Zaun counterclaimed, once again challenging the validity of these design rights, despite having previously failed to invalidate the RCD at the EUIPO.

The High Court struck out Zaun’s counter claim, and Zaun appealed this decision to the Court of Appeal.

The main issue before the Court of Appeal related to the timing of the proceedings and the consequential implications of various legislation relating to Brexit. However, these arguments failed.

The case was therefore decided on the common law principles of estoppel (which are English law rules of general application which can prevent a party from bringing a claim or action). This means that this decision has the potential for wider implications beyond cases which straddle the UK’s departure from the EU.

Key issues

The most important issues were:

1. Whether Zaun's counterclaim was barred by the common law principles of res judicata (which prevent the same dispute from being tried more than once) and abuse of process
2. Whether the UKRRD was a separate legal right which can be challenged independently of the RCD

Outcome

The Court of Appeal held that Zaun was estopped from challenging the validity of both the RCD and the UKRRD (despite it being a separate legal right), based on the common law principle of res judicata and abuse of process, because:

1. The EUIPO remains a court of competent jurisdiction and so has already adjudicated on the RCD and its decision is therefore final; and
2. Because the UKRRD is in substance the same as the RCD and because Zaun would be relying on the same grounds for arguing the invalidity of the UKRRD which it made to the EUIPO when challenging the RCD. As such, the issues are the same as those already determined by the EUIPO

Key takeaways

1. Common law principles of res judicata and abuse of process mean parties cannot challenge a UK re-registered design if they have previously lost a challenge against the EU parent design registration
2. As the case was decided on common law principles unrelated to the timing of the proceedings, its implications are not necessarily restricted to cases issued before Brexit but decided afterwards. Similarly, it is not necessarily restricted to registered designs, as the principles are equally applicable to registered trade marks

It remains to be seen how widely this decision is applied by the Court and the UKIPO, but for now it provides another argument for rights owners if any of their UK cloned rights are attacked following an unsuccessful attack on the EU parent rights. On the other hand, it also means that parties seeking to attack EU parent rights and the corresponding UK cloned rights will need to think carefully about the best strategy.

Call to action: Our dedicated team of trade mark attorneys, patent attorneys and IP solicitors routinely deliver thoughtful enforcement strategies that are centred on your commercial goals. It can be easy to overlook the importance of registry proceedings, but this case is a reminder that it pays to get your strategy and arguments right from the very start. If you would like to discuss this article or any of your current and future IP needs, please get in touch.