Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419 (IPEC) (17 September 2019)

Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419 (IPEC) (17 September 2019)

For a design to be protected as an unregistered Community design under Article 11 of Regulation (EC) No. 6/2002, the event of disclosure must take place within the EU. Novelty under Article 5(1)(a) is to be assessed as of the date UCD protection comes into being under Article 11. Prior disclosure outside the EU that could reasonably have become known to relevant circles in the EU destroys novelty if it occurs before the first disclosure within the EU. However, the law is not acte clair and requires a reference to the CJEU.

Citation
[2019] EWHC 2419 (IPEC)
Parties
Claimant: Beverly Hills Teddy Bear Company; Defendant: PMS International Group PLC
Jurisdiction
England and Wales
Judgment Date
17 September 2019
Procedural Posture
Intellectual Property Summary Judgment Application / Interlocutory (application for Summary Judgment)
Outcome
Reference to CJEU ordered; summary judgment not granted.
Legal Topics
Unregistered Community Design, Novelty Requirement, Disclosure, Interpretation of Regulation (ec) No. 6/2002, Reference to CJEU
Intellectual Property Law European Union Law Unregistered Community Design Novelty Requirement Disclosure Interpretation of Regulation (ec) No. 6/2002 Reference to CJEU

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Parties

Beverly Hills Teddy Bear Company

Claimant

PMS International Group PLC

Defendant

Procedural Posture

Intellectual Property Summary Judgment Application / Interlocutory (application for Summary Judgment)

Legal Issues

  1. 1 Whether, for UCD protection to arise under Article 11 of Regulation (EC) No. 6/2002, the event of disclosure must occur within the EU or if it suffices that the event could reasonably have become known to relevant circles within the EU
  2. 2 Whether the date for assessing novelty under Article 5(1)(a) is the date UCD protection comes into being under Article 11 or the date of first disclosure anywhere that could reasonably have become known to relevant circles in the EU

Ratio Decidendi

For a design to be protected as an unregistered Community design under Article 11 of Regulation (EC) No. 6/2002, the event of disclosure must take place within the EU. Novelty under Article 5(1)(a) is to be assessed as of the date UCD protection comes into being under Article 11. Prior disclosure outside the EU that could reasonably have become known to relevant circles in the EU destroys novelty if it occurs before the first disclosure within the EU. However, the law is not acte clair and requires a reference to the CJEU.

Court Disposition

Reference to CJEU ordered; summary judgment not granted.

Orders

  • Questions referred to the CJEU under Article 267 TFEU regarding the territorial requirement for disclosure and the relevant date for assessing novelty for UCD protection.