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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Praesidiad Holding BVBA & Anor v Zaun Ltd [2025] EWCA Civ 591 (09 May 2025) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2025/591.html Cite as: [2025] EWCA Civ 591 |
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ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
Mr Justice Zacaroli
Strand, London, WC2A 2LL |
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B e f o r e :
(Vice-President of the Court of Appeal (Civil Division))
LORD JUSTICE PETER JACKSON
and
LORD JUSTICE ARNOLD
____________________
(1) PRAESIDIAD HOLDING BVBA (2) GUARDIAR EUROPE BVBA |
Claimants/ Respondents |
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- and - |
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ZAUN LIMITED |
Defendant/ Appellant |
____________________
Benet Brandreth KC and Tristan Sherliker (instructed by Bird & Bird LLP) for the Respondents
Hearing date : 1 May 2025
____________________
Crown Copyright ©
Lord Justice Arnold:
Introduction
Procedural background
Relevant provisions of the CD Regulation
"A Community design shall have a unitary character. It shall have equal effect throughout the Community. It shall not be registered, transferred or surrendered or be the subject of a decision declaring it invalid, nor shall its use be prohibited, save in respect of the whole Community. This principle and its implications shall apply unless otherwise provided in this Regulation."
"Judgements of invalidity
1. Where in a proceeding before a Community design court the Community design has been put in issue by way of a counterclaim for a declaration of invalidity:
(a) if any of the grounds mentioned in Article 25 are found to prejudice the maintenance of the Community design, the court shall declare the Community design invalid;
(b) if none of the grounds mentioned in Article 25 is found to prejudice the maintenance of the Community design, the court shall reject the counterclaim.
2. The Community design court with which a counterclaim for a declaration of invalidity of a registered Community design has been filed shall inform the Office of the date on which the counterclaim was filed. The latter shall record this fact in the register.
3. The Community design court hearing a counterclaim for a declaration of invalidity of a registered Community design may, on application by the right holder of the registered Community design and after hearing the other parties, stay the proceedings and request the defendant to submit an application for a declaration of invalidity to the Office within a time limit which the court shall determine. If the application is not made within the time limit, the proceedings shall continue; the counterclaim shall be deemed withdrawn. Article 91(3) shall apply.
4. Where a Community design court has given a judgment which has become final on a counterclaim for a declaration of invalidity of a registered Community design, a copy of the judgment shall be sent to the Office. Any party may request information about such transmission. The Office shall mention the judgment in the register in accordance with the provisions of the implementing regulation.
5. No counterclaim for a declaration of invalidity of a registered Community design may be made if an application relating to the same subject matter and cause of action, and involving the same parties, has already been determined by the Office in a decision which has become final."
"Specific rules on related actions
1. A Community design court hearing an action referred to in Article 81, other than an action for a declaration of non-infringement, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the Community design is already in issue before another Community design court on account of a counterclaim or, in the case of a registered Community design, where an application for a declaration of invalidity has already been filed at the Office.
2. The Office, when hearing an application for a declaration of invalidity of a registered Community design, shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties, or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the registered Community design is already in issue on account of a counterclaim before a Community design court. However, if one of the parties to the proceedings before the Community design court so requests, the court may, after hearing the other parties to these proceedings, stay the proceedings. The Office shall in this instance continue the proceedings pending before it.
3. Where the Community design court stays the proceedings it may order provisional measures, including protective measures, for the duration of the stay."
Relevant provisions of the 2018 Act as originally enacted and the 2019 Regulations as originally made
"to prevent, remedy or mitigate –
(a) any failure of retained EU law to operate effectively, or
(b) any other deficiency in retained EU law,
arising from the withdrawal of the United Kingdom from the EU."
"Any power to make regulations under this Act-
(a) may be exercised so as to –
(i) modify retained EU law, or
(ii) make different provision for different cases or descriptions of case, different circumstances, different purposes or different areas, and
(b) includes power to make supplementary, incidental, consequential, transitional, transitory or saving provision … "
"Pending proceedings concerning an existing registered Community design
(1) This paragraph applies where on exit day an existing registered Community design is the subject of proceedings which are pending ('pending proceedings') before a court in the United Kingdom designated for the purposes of Article 80 ('a Community design court').
(2) Subject to sub-paragraphs (3) and (4), the provisions contained or referred to in Title IX of the Community Design Regulation (with the exception of Articles 86(2), (4), (5) and 91) shall continue to apply to the pending proceedings as if the United Kingdom were still a Member State with effect from exit day.
(3) Where the pending proceedings involve a claim for infringement or for threatened infringement of an existing registered Community design, without prejudice to any other relief by way of damages, accounts or otherwise available to the proprietor of the existing registered Community design, the Community design court may grant an injunction to prohibit unauthorised use of the re-registered design which derives from the existing registered Community design.
(4) Where the pending proceedings involve a counterclaim for a declaration of invalidity in relation to an existing registered Community design, the Community design court may declare the registration of the re-registered design which derives from the existing registered Community design to be invalid (wholly or in part).
(5) Where the registration of a re-registered design is declared invalid to any extent, the registration shall to that extent be treated as having been invalid from the date of registration or from such other date as the court may direct.
(6) For the purposes of this paragraph proceedings are treated as pending on IP completion day if they were instituted but not finally determined before IP completion day."
Relevant provisions of the Withdrawal Agreement
"Notwithstanding paragraph 1, if an intellectual property right referred to in that paragraph is declared invalid … in the Union as a result of an administrative or judicial procedure which was ongoing on the last day of the transition period, the corresponding right in the United Kingdom shall also be declared invalid … The date of effect of the declaration … in the United Kingdom shall be same as in the Union.
By way of derogation from the first subparagraph, the United Kingdom shall not be obliged to declare invalid … the corresponding right in the United Kingdom where the grounds for the invalidity … of the … registered Community design do not apply in the United Kingdom."
"In the United Kingdom, as well as in the Member States in situations involving the United Kingdom, in respect of legal proceedings instituted before the end of the transition period and in respect of proceedings or actions that are related to such legal proceedings pursuant to Articles 29, 30 and 31 of [the Brussels I Regulation (Recast)], Article 19 of Regulation (EC) No 2201/2003 ['the New Brussels II Regulation'] or Articles 12 and 13 of Council Regulation (EC) No 4/2009 ['the Maintenance Regulation'], the following acts or provisions shall apply:
(a) the provisions regarding jurisdiction of [the Brussels I Regulation (Recast)];
(b) the provisions regarding jurisdiction of Regulation (EU) 2017/1001 [the EU Trade Mark Regulation], of [the CD Regulation], of Regulation (EC) No 2100/94 ['the Community Plant Variety Rights Regulation'], of Regulation (EU) 2016/679 of the European Parliament and of the Council ['the General Data Protection Regulation'] and of Directive 96/71/EC of the European Parliament and of the Council ['the Posted Workers Directive'];
(c) the provisions of [the New Brussels II Regulation] regarding jurisdiction;
(d) the provisions of [the Maintenance Regulation] regarding jurisdiction."
Relevant provisions of the 2020 Act and the 2020 Regulations
"General implementation of remainder of withdrawal agreement
(1) Subsection (2) applies to—
(a) all such rights, powers, liabilities, obligations and restrictions from time to time created or arising by or under the withdrawal agreement, and
(b) all such remedies and procedures from time to time provided for by or under the withdrawal agreement,
as in accordance with the withdrawal agreement are without further enactment to be given legal effect or used in the United Kingdom.
(2) The rights, powers, liabilities, obligations, restrictions, remedies and procedures concerned are to be—
(a) recognised and available in domestic law, and
(b) enforced, allowed and followed accordingly.
(3) Every enactment (including an enactment contained in this Act) is to be read and has effect subject to subsection (2)."
"Power in connection with certain other separation issues
(1) A Minister of the Crown may by regulations make such provision as the Minister considers appropriate—
(a) to implement Part 3 of the withdrawal agreement (separation provisions),
(b) to supplement the effect of section 7A in relation to that Part, or
(c) otherwise for the purposes of dealing with matters arising out of, or related to, that Part (including matters arising by virtue of section 7A and that Part).
…
(3) Regulations under this section may make any provision that could be made by an Act of Parliament.
(4) Regulations under this section may (among other things) restate, for the purposes of making the law clearer or more accessible, anything that forms part of domestic law by virtue of—
(a) section 7A above and Part 3 of the withdrawal agreement …"
"Existing registered Community designs: effect of invalidity
(1) This paragraph applies where, on IP completion day, an existing registered Community design is the subject of proceedings under Article 25 (Grounds for invalidity) which have been instituted but not finally determined before IP completion day ('invalidation proceedings').
(2) Subject to sub-paragraph (4) where—
(a) the existing registered Community design is declared invalid (whether wholly or partly) pursuant to a decision which is finally determined, and
(b) the registrar has either—
(i) received notice of the situation referred to in paragraph (a) ('an invalidation notice'), or
(ii) otherwise become aware of the situation referred to in paragraph (a),
the registration of the re-registered design which derives from the existing registered Community design must be declared invalid to the same extent as the existing registered Community design.
(3) Where (by virtue of sub-paragraph (2)) the registration of a re-registered design is declared invalid, the registrar must—
(a) where there is a partial declaration of invalidity, amend the entry in the register of designs;
(b) otherwise, remove the re-registered design from the register.
(4) The registration of a re-registered design must not be declared invalid under sub-paragraph (2) where the grounds on which the existing registered Community design was declared invalid (whether wholly or partly) would not apply or would not have been satisfied in relation to the re-registered Community design if—
(a) the re-registered design had been the subject of an entry on the register as at the date the invalidation proceedings were instituted, and
(b) an application for a declaration of invalidity of the re-registered design based on those grounds had been made on that date under section 11ZA.
(5) Where the registration of a re-registered design is declared invalid to any extent pursuant to this paragraph—
(a) it shall to that extent be treated as having been invalid from the date on which the rights of the proprietor of the existing registered Community design from which it derives are deemed to have ceased under the Community Design Regulation;
(b) subject to any claim for compensation for damage caused by negligence or lack of good faith on the part of the proprietor or a claim for restitution based upon the unjust enrichment of the proprietor, the invalidity of the registration of the re-registered design does not affect—
(i) a decision arising from infringement proceedings which has been finally determined and which has been enforced prior to the date of the declaration of invalidity made pursuant to sub-paragraph (2) ('the invalidity declaration date');
(ii) any contract entered into prior to the invalidity declaration date to the extent that it has been performed prior to that date, subject to the right of a party to the contract to claim the repayment of any consideration paid under the contract where, having regard to the circumstances, it is fair and equitable for such repayment to be made.
(6) Where a declaration is made under sub-paragraph (2), section 11ZE(2) does not apply.
(7) An invalidation notice may be sent by any person.
(8) For the purposes of this paragraph—
(a) proceedings are instituted if an application or counterclaim for a declaration of invalidity—
(i) has been filed (and not subsequently withdrawn) with the European Union Intellectual Property Office or a court designated for the purposes of Article 80, and
(ii) meets the requirements for being accorded a filing date under the Community Design Regulation and Commission Regulation (EC) No 2245/2002 of 21 October 2002;
(b) a decision is finally determined when—
(i) it has been determined; and
(ii) there is no further possibility of the determination being varied or set aside (disregarding any power to grant permission to appeal out of time).
(9) An appeal lies from a declaration of invalidity under sub-paragraph (2)."
A point on terminology
"… It is common to speak of courts holding that patents, or particular claims of patents, are 'valid'. Indeed, it is common for courts to make declarations to that effect. Strictly speaking, however, all that any court can ever hold, or declare, is that a patent is not invalid as alleged by the party currently attacking the validity of the patent on the grounds relied upon by that party. It may be open to that party subsequently to attack the validity of the patent on different grounds, for example a new item of prior art which could not have been discovered previously with the exercise of reasonable diligence. It will certainly be open to different parties to attack the validity of the patent whether upon the same grounds or different grounds. Thus a finding or declaration that a claim is 'valid' must be understood as meaning 'not invalid as alleged'."
The asymmetry between findings of invalidity and findings of "validity"
Res judicata and abuse of process
The temporal dimension to the claim and counterclaim
The Claimants' application to strike out the counterclaim: outline of the issues
Zaun's position with respect to res judicata and abuse of process
The judge's decision
Zaun's grounds of appeal
What is the purpose of the exceptions in paragraph 9(2) of Schedule 1A to the 1949 Act?
Ground 1
"… in the context of the Withdrawal Agreement and in the light of its object and purpose, article 67(1)(b) means that articles 122-135 of the EUTM Regulation will continue to have direct effect in the United Kingdom and in Member States in situations involving the United Kingdom after the end of the transition period in respect of legal proceedings instituted before the end of that period before a designated court. Notably, this is also what paragraph 20(2) of Schedule 2A to the 1994 Act provides, the difference being that paragraph 20(2) excludes certain provisions of Chapter 10 from application (articles 128(2), (4), (6), (7) and 132). Those exceptions are not in issue in this appeal, and so no more needs to be said about whether there is an inconsistency between article 67(1)(b) and paragraph 20(2). If the exceptions in paragraph 20(2) were inconsistent with article 67(1)(b) then, to that extent, paragraph 20(2) would fall to be disapplied."
"511. … it would have been highly unfortunate if the United Kingdom's withdrawal from the EU had been other than on terms which enabled pending legal proceedings to be decided on the basis of the pre-existing law. It is a basic principle of legal certainty, and an aspect of the rule of law, that the legal consequences of events are, in general, determined in accordance with the law in force at the time of those events, rather than a different law introduced at a later date. Proprietors of trade marks who had brought infringement proceedings in designated United Kingdom courts before the end of the transition period had accrued causes of action under the EU Trade Mark Regulation (to which defendants with grounds for challenging the validity of the marks in question had a counterclaim). Whether the proceedings were concluded before the end of the transition period could depend on wide variety of factors, including, in the present case, the fact that there was a preliminary reference to the Court of Justice of the European Union, and an appeal to this court. It would be incompatible with the values I have mentioned if the time taken by the judicial process were to have the effect of depriving the parties of the remedy to which they were entitled. It would also mean that identical cases would be decided differently, depending on the vicissitudes of litigation, and on whether they happened to be brought in the courts of this country or in the courts of the remaining EU member states.
512. As one would expect, one of the objectives of the Withdrawal Agreement was to avoid problems of that kind. That is not only implicit in its provisions, as I have explained, but is also reflected in its preamble, which stresses 'that the objective of this Agreement is to ensure an orderly withdrawal of the United Kingdom from the Union and Euratom', and recites that the parties are resolved to do so 'through various separation provisions aiming to prevent disruption and to provide legal certainty to citizens and economic operators as well as to judicial and administrative authorities in the Union and in the United Kingdom'."
Ground 2
Ground 3
Conclusion
Lord Justice Peter Jackson:
Lord Justice Underhill: