Marks & Spencer PLC v Aldi Stores Limited
[2024] EWCA Civ 178
Praesidiad Holding BVBA & Anor v Zaun Limited
13 June 2024
[2024] EWHC 1549 (Pat)
High Court
A company's design was challenged and upheld in the EU. After Brexit, the same company tried to challenge it again in the UK. The court said no, because the first decision is binding, due to rules on avoiding duplicate lawsuits.
Key Facts
- •Praesidiad Holding BVBA (formerly Betafence Holding BVBA) owns a Registered Community Design (RCD) for its 'Bekasecure' fence posts.
- •Zaun Limited was accused of infringing the RCD and challenged its validity at the EUIPO.
- •The UK infringement action was stayed pending the EUIPO's decision.
- •After a lengthy process, the EUIPO ultimately upheld the RCD's validity.
- •Following Brexit, the RCD automatically became a re-registered UK design.
- •Zaun counterclaimed for a declaration of invalidity of both the RCD and the re-registered UK design in the UK infringement action.
- •Betafence applied to strike out Zaun's counterclaim, arguing res judicata and the continued applicability of Article 86(5) of the Community Designs Regulation.
Legal Principles
Article 86(5) of the Community Designs Regulation (CDR)
Community Designs Regulation (EC) 6/2002
Res judicata (cause of action estoppel, issue estoppel, Henderson v Henderson abuse of process)
English common law
Direct effect of the Withdrawal Agreement and its interaction with UK secondary legislation
European Union (Withdrawal Agreement) Act 2020, European Union (Withdrawal) Act 2018, Designs and International Trade Marks (Amendment etc.) (EU Exist) Regulations 2019, Intellectual Property (Amendment etc.) Regulations 2020, Registered Designs Act 1949 (Schedule 1A)
Outcomes
Zaun's counterclaim seeking a declaration of invalidity of the RCD and the re-registered UK design was struck out.
The court held that Article 86(5) of the CDR, which precludes a counterclaim for invalidity if the EUIPO has already reached a final decision on the same matter, still applies due to the Withdrawal Agreement. Even if Article 86(5) were not applicable, the common law principles of res judicata prevent Zaun from re-litigating the invalidity issue, as the EUIPO is a court of competent jurisdiction for this purpose. The re-registered UK design's fate is inherently linked to the RCD's.