Praesidiad Holding BVBA & Anor v Zaun Ltd [2024] EWHC 1549 (Pat) (13 June 2024)

Praesidiad Holding BVBA & Anor v Zaun Ltd [2024] EWHC 1549 (Pat) (13 June 2024)

Article 86(5) of the Community Designs Regulation continues to apply to the Infringement Action by virtue of the direct effect of Article 67(1) of the Withdrawal Agreement and s.7A of the 2018 Withdrawal Act, precluding Zaun from bringing a counterclaim for invalidity. Even if Article 86(5) were disapplied, the common law principles of res judicata would independently bar Zaun from re-litigating the validity of the RCD and Re-registered Design, as the issue was finally determined by the EUIPO, a tribunal of competent jurisdiction.

Citation
[2024] EWHC 1549 (Pat)
Parties
Claimant: PRAESIDIAD HOLDING BVBA (previously BETAFENCE HOLDING BVBA); Claimant: GUARDIAR EUROPE BVBA; Defendant: ZAUN LIMITED
Jurisdiction
England and Wales
Judgment Date
13 June 2024
Procedural Posture
Intellectual Property (designs) / Interlocutory Application to Strike Out Counterclaim
Outcome
Counterclaim struck out
Legal Topics
Registered Community Designs, Re Registered UK Designs, Res Judicata, Jurisdiction Post Brexit, Article 86(5) Community Designs Regulation, Withdrawal Agreement, Abuse of Process
Intellectual Property European Union Law Civil Procedure Registered Community Designs Re Registered UK Designs Res Judicata Jurisdiction Post Brexit Article 86(5) Community Designs Regulation +2 more

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Parties

PRAESIDIAD HOLDING BVBA (previously BETAFENCE HOLDING BVBA)

Claimant

GUARDIAR EUROPE BVBA

Claimant

ZAUN LIMITED

Defendant

Procedural Posture

Intellectual Property (designs) / Interlocutory Application to Strike Out Counterclaim

Legal Issues

  1. 1 Whether Zaun Limited is precluded from challenging the validity of the RCD and Re-registered Design after final determination by the EUIPO
  2. 2 Whether Article 86(5) of the Community Designs Regulation continues to apply post-Brexit
  3. 3 Whether common law principles of res judicata and abuse of process preclude the counterclaim

Ratio Decidendi

Article 86(5) of the Community Designs Regulation continues to apply to the Infringement Action by virtue of the direct effect of Article 67(1) of the Withdrawal Agreement and s.7A of the 2018 Withdrawal Act, precluding Zaun from bringing a counterclaim for invalidity. Even if Article 86(5) were disapplied, the common law principles of res judicata would independently bar Zaun from re-litigating the validity of the RCD and Re-registered Design, as the issue was finally determined by the EUIPO, a tribunal of competent jurisdiction.

Court Disposition

Counterclaim struck out

Orders

  • Zaun Limited's counterclaim seeking a declaration of invalidity of the RCD and the Re-registered Design is struck out.