Praesidiad Holding BVBA & Anor v Zaun Limited [2025] EWCA Civ 591

[2025] EWCA Civ 591Case No CA-2024-001795
IN THE COURT OF APPEAL (CIVIL DIVISION)
[2024] EWHC 1549 (Pat)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
Mr Justice Zacaroli
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 9 May 2025
Before
LORD JUSTICE UNDERHILL(Vice-President of the Court of Appeal (Civil Division))LORD JUSTICE PETER JACKSONLORD JUSTICE ARNOLD
Between
PRAESIDIAD HOLDING BVBAClaimants/ RespondentsGUARDIAR EUROPE BVBARespondentZAUN LIMITEDDefendant/ Appellant
Mark Vinall (instructed by Venner Shipley LLP) for AppellantBenet Brandreth KC and Tristan Sherliker (instructed by Bird & Bird LLP) for RespondentsHearing Hearing date : 1 May 2025
Approved JudgmentThis judgment was handed down remotely at 10.30am on 9 May 2025 by circulation to the parties or their representatives by e-mail and by release to the National Archives..............................

Introduction

[1]This is an appeal by the Defendant (“Zaun”) against an order made by Zacaroli J (as he then was) on 22 July 2024 striking out Zaun’s counterclaim in these proceedings for the reasons given in his judgment dated 13 June 2024 [2024] EWHC 1549 (Pat). By its counterclaim Zaun claims a declaration that Registered Community Design No. 000127204-0001 (“the RCD”) and United Kingdom Re-Registered Design No. 90001272040001 (“the UKRRD”) “are and have at all material times been invalid”. In essence, the judge held that Zaun was precluded from challenging the validity of the RCD and the UKRRD because Zaun had already unsuccessfully challenged the validity of the RCD before the European Union Intellectual Property Office (“the EUIPO”) and on appeal therefrom to the General Court of the European Union. Zaun appeals with permission granted by Falk LJ, contending in short that the effect of the relevant Brexit legislation is that it is able to challenge the validity of the RCD and the UKRRD in these proceedings. The resolution of the appeal depends on the correct interpretation of legislation of considerable complexity.

Procedural background

[2]The First Claimant (“Betafence”) is the proprietor of the RCD and the UKRRD. The Second Claimant (“Guardiar Europe”) is its licensee. Both Claimants are Belgian companies which are members of the Guardiar Group.[3]On 8 March 2018 Betafence’s Belgian patent attorneys sent a letter to Zaun alleging infringement of the RCD. On 27 March 2018 Zaun filed an application at the EUIPO for a declaration of invalidity in respect of the RCD on the grounds that:(i) all the features of appearance of the product depicted in the design were solely dictated by its technical function (relying on Article 8(1) of Council Regulation 6/2002/EC of 12 December 2001 on Community designs, “the CD Regulation”); and(ii) the design was either not new or lacked individual character since it differed only in immaterial details from, or produced the same overall impression as, five prior designs (relying on Articles 5 and 6 of the CD Regulation). On 24 July 2018 the Claimants issued the claim form in these proceedings seeking relief for infringement of the RCD and served it on Zaun together with Particulars of Claim. On 8 August 2018 Zaun applied pursuant to Article 91(1) of the CD Regulation (set out in paragraph 12 below) for a stay of the claim pending the final determination of the application for a declaration of invalidity. On 23 October 2018 Deputy Master Hansen made an order by consent for such a stay.[4]On 19 July 2019 the EUIPO Invalidity Division issued a decision in case ICD 101 799 rejecting the application for a declaration of invalidity in respect of the RCD. Zaun appealed against this decision so far as its Article 8(1) ground was concerned, and on 15 February 2021 the EUIPO Third Board of Appeal issued a decision in case R 2068/2019-3 allowing the appeal, annulling the contested decision and declaring the RCD to be invalid pursuant to Article 8(1) of the CD Regulation. Betafence appealed against this decision, and on 19 October 2022 the General Court handed down its judgment in Case T-231/21 allowing the appeal, annulling the contested decision and rejecting the application for a declaration of invalidity. Zaun applied for permission to appeal against this judgment, but on 18 April 2023 the Court of Justice of the European Union made a reasoned order in Case C-780/22 P refusing to allow the appeal to proceed. Although the judgment of the General Court appears on its face to be dispositive of the application for a declaration of invalidity, the case was in fact remitted to the Third Board of Appeal. On 12 June 2023 the Third Board of Appeal issued a second decision in case R 2068/2019-3 dismissing Zaun’s appeal. It is common ground that, at this point, the stay ordered by Deputy Master Hansen came to an end.[5]On 7 July 2023 the Claimants served an Amended Particulars of Claim. The amendments fall into four main groups. The first group of amendments provides further particulars of allegedly infringing acts committed by Zaun in the period from April 2017 to May 2018 (i.e. prior to the issue of the claim form and prior to Brexit). The second group of amendments alleges infringing acts committed by Zaun in January 2022 (i.e. after the issue of the claim form and after Brexit). The third group of amendments adds a claim for infringement of the UKRRD to the existing claim for infringement of the RCD. The combined effect of the second and third groups is to add allegations of infringement of the UKRRD in January 2022 to the pre-existing allegations of infringement of the RCD in June 2014 to March 2018. The fourth group of amendments recites the course of the EUIPO invalidity proceedings, although no legal consequence of those proceedings is asserted.[6]On 7 August 2023 Zaun served a Defence and Counterclaim. The counterclaim alleges that the RCD is invalid on the same grounds as those relied on by Zaun before the EUIPO, but the prior designs relied upon for the purposes of Articles 5 and 6 of the CD Regulation are different. Precisely the same grounds are relied upon as invalidating the UKRRD pursuant to sections 1B and 1C of the Registered Designs Act 1949, which implemented European Parliament and Council Directive 98/71/EC of 13 October 1998 on the legal protection of designs and correspond to Articles 5-6 and 8 of the CD Regulation. On 19 September 2023 the Claimants applied to strike out the counterclaim. This application came before the judge on 7 May 2024, and as noted above he acceded to it.

Relevant provisions of the CD Regulation

[7]At the time that these proceedings were commenced, the UK was a Member State of the EU and the CD Regulation therefore had direct effect in the UK. The arguments on the appeal concern, among other things, the interpretation and effect of Title IX, headed “Jurisdiction and Procedure in Legal Actions relating to Community Designs”, and in particular Article 86(5). Before turning to Title IX, it is important to note Article 1(3), which provides:
“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.”
[8]Title IX is divided into three sections. Section 1 is headed “Jurisdiction and enforcement”. It consists of Article 79 concerning the application of the Brussels Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (which was subsequently replaced by the European Parliament and of the Council Regulation 1215/2012/EU of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (recast), “the Brussels I Regulation (Recast)”).[9]Section 2 is headed “Disputes concerning the infringement and validity of Community designs”.Article 80 requires the Member States to designate Community design courts to perform the functions assigned to them by the CD Regulation. (The UK complied with this obligation by designating the High Court of England and Wales, among other courts, as a Community design court: Community Designs (Designation of Community Design Courts) Regulations 2005 (SI 2005/696). By virtue of CPR rule 63.2 claims concerning registered Community designs must be started in either the Patents Court or the Intellectual Property Enterprise Court.)[10]Article 81 provides that Community design courts “shall have exclusive jurisdiction” over four categories of claim, including “(a) ... infringement actions” and “(d) … counterclaims for a declaration of invalidity of a Community design raised in connection with actions under (a)”. Article 82 deals with international jurisdiction. Article 83 specifies the territorial extent of Community design courts’ jurisdiction with respect to infringement. Article 84 specified the grounds on which, the persons by whom and the proceedings within which a counterclaim for a declaration of invalidity may be brought. Article 85(1) provides for a presumption of validity of registered Community designs in infringement proceedings, and stipulates that validity “may be challenged only with a counterclaim for a declaration of invalidity”. (Article 85(2) concerns unregistered Community designs.)[11]Article 86 provides: “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.” (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.[12]Article 87 provides that, once final, a judgment of a Community design court declaring a Community design invalid shall have effect in all Member States. Article 88 deals with applicable law. Paragraph 1 provides that the Community design courts shall apply the CD Regulation. Paragraph 2 provides that, on matters not covered by the CD Regulation, they shall apply their national law. Article 89 deals with sanctions for infringement and threatened infringement. Article 90 deals with provisional measures.[13]Article 91 provides:
“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.”
[14]Article 92 deals with the jurisdiction of Community design courts of second instance and further appeals.[15]Section 3 of Title IX is headed “Other disputes concerning Community designs”. Article 93 deals with the jurisdiction of national courts other than Community design courts. Article 94 provides that a national court which is dealing with an action relating to a Community design other than the actions referred to in Article 81 shall treat the design as valid.[16]Section 8(1) of the European Union (Withdrawal) Act 2018 as originally enacted empowered a Minister of the Crown by regulations to make such provision as the Minster considered appropriate:
“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.” arising from the withdrawal of the United Kingdom from the EU.”
[17]This power was subject to the constraints set out in the remainder of section 8, which are not relevant for present purposes. Schedule 7 paragraph 21 of the 2018 Act provided: “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 … ” (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[18]The Designs and International Trade Marks (Amendments etc) (EU Exit) Regulations 2019 (SI 2019/638) were made pursuant to the powers conferred by section 8(1) and Schedule 7 paragraph 21 of the 2018 Act on 18 March 2019. At that time the UK had requested, but not yet obtained, an extension of the operation of Article 50 of the Treaty on the European Union, without which the UK would cease to be a Member State on 29 March 2019. Paragraph 1 of the 2019 Regulations as originally made provided for the Regulations to come into force on “exit day” (i.e. the date on which the UK ceased to be a Member State).[19]Paragraph 5(a) of the 2019 Regulations provided that Schedule 3 contained amendments to the 1949 Act to make provision “for certain registered Community designs to be treated as registered under the 1949 Act from exit day”. Schedule 3 paragraph 2 provided for the 1949 Act to be amended by the insertion of section 12A which gave effect to Schedule 1A. Schedule 3 paragraph 3 inserted Schedule 1A into the 1949 Act. Paragraph 1 of Schedule 1A to the 1949 Act as so inserted provided for a design which was an existing registered Community design immediately before exit day to be treated on and after exit day “as if an application for its registration had been made, and it had been registered, under this Act”, and to be referred to as a “re-registered design”.[20]Paragraph 9 of Schedule 1A to the 1949 Act then provided:
“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.”
[21]Paragraph 9(2), and in particular the parenthesis, is central to this appeal.[22]At that stage, no provision was made with respect to pending EUIPO invalidation proceedings, but as will appear this omission was subsequently rectified.[23]Regulation 11 of the 2019 Regulations revoked the 2005 Regulations designating the High Court as a Community design court with effect from exit day.

Relevant provisions of the Withdrawal Agreement

[24]The Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community (“the Withdrawal Agreement”) was signed on 24 January 2020. It came into force when the UK ceased to be a Member State on 31 January 2020. It provided for a transition period (also known as the “implementation” period) ending on 31 December 2020 (referred to in the UK implementing legislation as “IP completion day”) during which most EU law would continue to have effect in the UK.[25]Title IV of the Withdrawal Agreement deals with intellectual property. Article 54(1)(b) provides that the holder of a registered Community design shall, without any re-examination, become the holder of a comparable registered design in the UK for the same design. Similar provisions are made with regard to other registered rights. Article 54(3) provides (so far as relevant):
“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.”
[26]Title VI is headed “Ongoing judicial cooperation in civil and commercial matters”. Article 67(1) provides that:
“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

[27]The European Union (Withdrawal Agreement) Act 2020 gave effect to the Withdrawal Agreement and amended the 2018 Act. Among other things, the 2020 Act and secondary legislation made thereunder amended references to “exit day” in the secondary legislation made under the 2018 Act, such as the 2019 Regulations, to “IP completion day”.[28]The 2020 Act amended the 2018 Act to insert a new section 7A which provides (so far as relevant): “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).” (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. (a) recognised and available in domestic law, and (b) enforced, allowed and followed accordingly.[29]The 2020 Act also amended the 2018 Act to insert section 8B, which provides (so far as relevant):
“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 …” (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).

(a) section 7A above and Part 3 of the withdrawal agreement …”

[30]The Intellectual Property (Amendment etc) (EU Exit) Regulations 2020 (SI 2020/1050) were made pursuant to sections 8(1), 8B(1)(a) and 8B(2)(a) of the 2018 Act as amended by the 2020 Act. Paragraph 1(2) of the 2020 Regulations provided that Part 5 came into force immediately before IP completion day. Part 5 amended the 2019 Regulations so as to substitute “IP completion day” for “exit day”. Subject to this amendment, paragraphs 1 and 9 of Schedule 1A to the 1949 Act remain as set out in paragraphs 19 and 20 above.[31]Paragraph 21(c)(ii) of Part 5 amended Schedule 3 to the 2019 Regulations so as to insert paragraph 9A into Schedule 1A to the 1949 Act in order to implement Article 54(3) of the Withdrawal Agreement. Paragraph 9A of Schedule 1A to the 1949 Act provides: “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) 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. (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. (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. (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. (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).

A point on terminology

[32]In Dr Reddy’s Laboratories (UK) Ltd v Warner-Lambert Co LLC [2023] EWCA Civ 113 I explained at [84]:
“… 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’.”
[33]The same is true of other registered rights such as registered Community designs and UK re-registered designs.

The asymmetry between findings of invalidity and findings of “validity”

[34]The point on terminology discussed above reflects an asymmetry between a finding that a registered right is invalid and a finding that it is “valid”, i.e. not invalid as alleged. If it is found that a registered right is invalid, then (subject to any appeal) that is the end of the matter: the right has ceased to exist. By contrast, a finding that the right is “valid” is not necessarily the end of the matter, since its validity can be challenged again. Although it is not common for repeated challenges to validity to be made, it is not unheard of.[35]It can be seen from the citation from Dr Reddy’s v Warner-Lambert that I distinguished between a subsequent challenge by the same party (or, I would add, its privies) and a subsequent challenge by a different party. The reason for making that distinction is that the ability of a party to mount successive challenges to the validity of a registered right is liable to be constrained by the doctrines of res judicata and abuse of process.

Res judicata and abuse of process

[36]There was no dispute before either the judge or this Court as to the applicable principles concerning res judicata and abuse of process, which were explained by Lord Sumption in Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46, [2014] AC 160. In brief summary, there are three principles which are potentially relevant. First, cause of action estoppel, which is the principle that once a cause of action has been held to exist or not to exist, that determination cannot be challenged by either party in subsequent proceedings. Secondly, issue estoppel, which is the principle that, in general, the determination of an issue which is necessary to the decision in earlier proceedings is binding on the parties in later proceedings. Thirdly, the principle derived from Henderson v Henderson (1843) 3 Hare 100, which precludes a party from raising in later proceedings points that were not, but could and should have been, raised in earlier proceedings, which is a species of abuse of process.

The temporal dimension to the claim and counterclaim

[37]Before turning to the Claimants’ application to strike out the counterclaim, it is first necessary to consider the bases upon which the claim and counterclaim were brought. In their arguments before the judge and in their skeleton arguments for this appeal the parties ignored the temporal dimension to the claim and counterclaim that I have set out in paragraph 5 above. In my view that approach is capable of leading to error. I shall therefore begin by considering the position concerning the alleged infringements of the RCD in the period from April 2017 to May 2018, and the counterclaim concerning the RCD, before turning to consider the position concerning the alleged infringements of the UKRRD in January 2022, and the counterclaim concerning the UKRRD.[38]It will be appreciated from the procedural chronology set out above that, as at 31 December 2020 (IP completion day), the Claimants had commenced the proceedings and made allegations of infringement of the RCD in 2017-2018, but Zaun had not made any counterclaim. The claim was a claim for infringement of a registered Community design which the High Court as a Community design court had jurisdiction in respect of pursuant to Article 81(a) of the CD Regulation. By virtue of Article 88(1) the applicable law was, primarily, the CD Regulation.[39]The Claimants accept that, despite Brexit, Zaun was able (subject to the objections raised by the Claimants’ application) to bring its counterclaim for a declaration of invalidity of the RCD in August 2023 because the counterclaim was made in proceedings which were pending as at 31 December 2020. Since the Claimants accept this, it is not strictly necessary to determine which legislative provision(s) enabled Zaun to bring that counterclaim. It is nevertheless pertinent to consider this question, because it provides the starting point for the issues which arise on the appeal. It is clear that the proceedings are “pending proceedings” as defined in paragraph 9(1) of the Schedule 1A to the 1949 Act. During the course of argument counsel agreed that it followed from paragraph 9(2), which provides that, with certain exceptions, the provisions in Title IX of the CD Regulation shall continue to apply to pending proceedings as if the UK were still a Member State, that Zaun was able to bring its counterclaim pursuant to Article 81(d) of the CD Regulation. By virtue of Article 88(1) the applicable law is (the relevant provisions of) the CD Regulation. Although paragraph 9(2) is expressed to be subject to paragraph 9(3) and 9(4), nothing in those subparagraphs prevents Zaun from bringing such a counterclaim. It was also agreed that the same result could if necessary be arrived at via section 7A of the 2020 Act and Article 67(1) of the Withdrawal Agreement: cf. Simon v Taché [2022] EWHC 1674 (Comm) at [66]-[75] (HHJ Cawson QC sitting as Judge of the High Court).[40]Turning to the allegations of infringement of the UKRRD in January 2022 which were introduced by the amendment to the Particulars of Claim, the Claimants contend that these allegations also form part of the pending proceedings. In a strictly procedural sense this is correct, but, as counsel for Zaun submitted, the position concerning this claim cannot be any different to what it would have been if it had been commenced by way of a fresh claim form. The allegation is of infringement of the UKRRD, not of the RCD. The applicable law is the 1949 Act, not the CD Regulation. Zaun’s counterclaim for a declaration of invalidity of the UKRRD is founded upon the domestic jurisdiction of the High Court and the relevant provisions of the 1949 Act. It is not founded, and could not be founded, upon Article 81(d) and other relevant provisions of the CD Regulation. Zaun could have relied upon paragraph 9(4) of Schedule 1A to seek a declaration of invalidity of the UKRRD consequential upon a declaration of invalidity of the RCD, but the case pleaded is an independent attack on the validity of the UKRRD, albeit on the same grounds. Subject to the Claimants’ application, this counterclaim would be properly constituted even if there were no counterclaim for a declaration of invalidity of the RCD.

The Claimants’ application to strike out the counterclaim: outline of the issues

[41]The Claimants’ application to strike out the counterclaim is based on the contention that Zaun is precluded from bringing its counterclaim by Article 86(5) of the CD Regulation, alternatively by the common law principles of res judicata and/or abuse of process. There is no dispute that, so far as the RCD is concerned, the counterclaim relates to the same subject matter and cause of action, and involves the same parties, as the application that was finally determined by the second decision of the Third Board of Appeal.[42]Zaun contends that both Article 86(5) of the CD Regulation and the common law principles are disapplied by paragraph 9(2) of Schedule 1A to the 1949 Act.[43]The Claimants respond that, even if Article 86(5) of the CD Regulation would have been disapplied by paragraph 9(2) of Schedule 1A to the 1949 Act, that is overridden by section 7A of the 2020 Act, which gives effect to Article 67(1) of the Withdrawal Agreement, and hence to “the provisions regarding jurisdiction of” the CD Regulation. The Claimants say that those provisions are the provisions of Title IX, alternatively that Article 86(5) is a provision regarding jurisdiction.[44]Zaun accepts that section 7A of the 2020 Act and Article 67(1) of the Withdrawal Agreement are capable of overriding the exception in paragraph 9(2) of Schedule 1A to the 1949 Act, but disputes that Article 86(5) is a provision regarding jurisdiction.[45]The Claimants dispute that paragraph 9(2) of Schedule 1A to the 1949 Act disapplies the common law in any event. Zaun disputes that the common law principles bar its counterclaim for a declaration of invalidity of the UKRRD in any event.

Zaun’s position with respect to res judicata and abuse of process

[46]Zaun argued before the judge that a decision of the EUIPO was not a decision of a court of competent jurisdiction and thus could not found a plea of res judicata or Henderson v Henderson abuse of process. The judge rejected that argument, and Zaun does not challenge that aspect of his decision.[47]Zaun accepted before the judge that, although it relied on different prior designs for its Article 5 and 6 grounds of invalidity and (it said) different arguments on technical function for its Article 8 ground, these differences were not sufficient to avoid the doctrines of res judicata and abuse of process applying if they would otherwise apply and had not been statutorily disapplied by paragraph 9(2) of Schedule 1A to the 1949 Act. Accordingly, Zaun accepted that, if those doctrines did apply (because the EUIPO was a court of competent jurisdiction) and had not been statutorily disapplied, then Zaun was precluded from pursuing its counterclaim for a declaration of invalidity of the RCD. Zaun did not accept that, on those hypotheses, it was precluded from pursuing its counterclaim for a declaration of invalidity of the UKRRD.[48]The judge held that Zaun was precluded from bringing its counterclaim in respect of the RCD by Article 86(5), which applied by virtue of section 7A of the 2020 Act and Article 67(1) of the Withdrawal Agreement for two alternative reasons. The first was that the provisions of Title IX of the CD Regulation as a whole were the provisions regarding jurisdiction. The second was that Article 86(5) was a provision regarding jurisdiction. The judge held that, irrespective of Article 86(5), Zaun was precluded from bringing its counterclaim in respect of the RCD by res judicata or abuse of process. Finally, he held that the same conclusions applied to Zaun’s counterclaim in respect of the UKRRD.

Zaun’s grounds of appeal

[49]Zaun appeals on three grounds. Ground 1 is that the judge was wrong to hold that Article 86(5) of the CD Regulation is a provision regarding jurisdiction within the meaning of Article 67(1) the Withdrawal Agreement. Ground 2 is that the judge was wrong to hold that Article 86(5) continues to apply to these proceedings. Ground 3 is that the judge was wrong to hold that Zaun is precluded from bringing its counterclaim by res judicata or abuse of process.[50]Before turning to Zaun’s grounds of appeal, an important preliminary question is the purpose of the parenthesis in paragraph 9(2) of Schedule 1A to the 1949 Act, which excludes the application of Articles 86(2), (4), (5) and 91 of the CD Regulation. Neither side was able to point to any aids to interpretation which shed any light on this.[51]Zaun submitted that the exceptions represented a deliberate legislative choice which reflected the policy of the UK “taking back control” of its law from the EU. The Claimants submitted that they were an interim measure pending the negotiation and agreement of the Withdrawal Agreement.[52]I do not accept either submission. I agree with Zaun that the exceptions represent a deliberate legislative choice, but it is not one that is explicable by the policy of “taking back control”, because in all other respects paragraph 9(2) continues to apply Title IX of the CD Regulation. As for the suggestion that this was a purely interim measure, this is belied by the fact that paragraph 9(2) was not amended by the 2020 Regulations.[53]It was also suggested in the course of argument that the exceptions were explained by the fact that the excepted provisions required some degree of reciprocity between the UK and the EU in the form of the EUIPO. I do not accept this either. Articles 86(2) and 86(4) require a Community design court to provide information about counterclaims for declarations of invalidity to the EUIPO. There is no reciprocity involved. Furthermore, given that the High Court continues to have jurisdiction as a Community design court in pending proceedings to make declarations of invalidity of registered Community designs, it is difficult to see why the EUIPO should not continue to be informed about them.[54]Article 91 deals with the relationship between proceedings before different Community design courts and between proceedings before a Community design court and proceedings before the EUIPO. Again, given that the High Court continues to have jurisdiction as a Community design court in pending proceedings, it is difficult to see why this should be excluded. It is even more difficult when it is appreciated that, as Underhill LJ pointed out during the course of argument, the last sentence of Article 86(3) (which is not excepted by paragraph 9(2)) provides that “Article 91(3) shall apply”.[55]Turning finally to Article 86(5), given that in pending proceedings the High Court continues to have the same jurisdiction as a Community design court to make declarations of invalidity of registered Community designs that it had prior to 31 December 2020, it is difficult to see any policy reason for excluding the application of Article 86(5) and permitting issues to be re-litigated which previously could not be re-litigated. This does not entitle the Court to ignore the exception of Article 86(5) in paragraph 9(2), but it does mean that there is no clear policy imperative which the Court needs to take into account when it comes to considering the effect of section 7A and Article 67(1) of the Withdrawal Agreement.

Ground 1

[56]Zaun contends that the judge was wrong to hold that Title IX as a whole constitutes “the provisions regarding jurisdiction of” the CD Regulation referred to in Article 67(1) of the Withdrawal Agreement, and wrong to hold that, in any event, Article 86(5) is a provision regarding jurisdiction.[57]It is not necessary to decide whether the judge was right about Title IX as a whole, because in my judgment he was right about Article 86(5). The primary definition of “jurisdiction” in Jowett’s Dictionary of English Law (6th ed) is “legal authority; extent of power”, referring in particular to the authority or power of a court. A synonym for jurisdiction in this sense is “competence”. I do not think that this is a purely English conception of the notion. Indeed, the French text of Article 67(1) uses the word “compétence” where the English has “jurisdiction”. In the conflict of laws (private international law) context, it is common to distinguish between “personal jurisdiction”, meaning the persons in relation to whom the court is competent to adjudicate, and “subject matter jurisdiction”, meaning the kinds of question which the court is competent to adjudicate.[58]Zaun contends that Article 86(5) is not concerned with jurisdiction, but with procedure or substantive law. It argues that Article 86(5) does not provide for a restriction on jurisdiction, but rather a procedural bar analogous to limitation or a substantive defence analogous to an estoppel. Jurisdiction, it says, is solely about which court or tribunal should decide an issue.[59]I disagree. Article 86(5) plainly does not provide for a substantive defence: it is not located in any of the Titles of the CD Regulation dealing with substantive law, but in Title IX dealing with “jurisdiction and procedure”; and it does not provide that the defendant to the counterclaim has a defence, but says that “[n]o counterclaim … may be made”. I accept that it could be described as a procedural bar, but in my judgment it is aptly characterised as a provision regarding jurisdiction because it qualifies the subject matter jurisdiction, or competence, of Community design courts pursuant to Article 81(d). Furthermore, analogies with English provisions such as those governing limitation are dangerous because, as counsel for Zaun accepted, Article 86(5) must be given an autonomous interpretation as a matter of European law. As for determining which court or tribunal should decide an issue, that involves an allocation of jurisdiction, that is to say, the authority or power to decide the issue.[60]Zaun also advances two further arguments which I should mention. The first is that, under the Brussels I Regulation, a foreign judgment which has been recognised must in principle have the same effects in the State in which recognition is sought as it does in the State of origin, This is irrelevant since the issue is one of interpretation of Article 86(5) of the CD Regulation, and not of the Brussels I Regulation, and it does not involve a question of recognition.[61]The second argument is that the UK legislator must have thought that the exception of Article 86(5) contained in paragraph 9(2) of Schedule 1A to the 1949 Act complied with Article 67(1) of the Withdrawal Agreement, otherwise it would have been amended by the 2020 Regulations. There is no evidence that the compatibility of the exception with Article 67(1) was considered when the 2020 Regulations were framed, however. Even if that was what the UK legislator thought, the legislator may have been mistaken. To repeat, the issue is one of interpretation of Article 86(5), which cannot be affected by the English legislation.[62]Although I have reached the conclusions set out above on the basis of the legislation applicable to registered Community designs, it is supported by a line of authority concerning similar provisions with respect to EU trade marks, and in particular the recent decision of the Supreme Court in Sky plc v SkyKick UK Ltd [2024] UKSC 36, [2025] Bus LR 251.[63]Sky v SkyKick is a complicated case, but it is not necessary to explain it in any detail. It suffices to say that an issue arose in the Supreme Court as to whether, in proceedings concerning the infringement and validity of EU trade marks which were pending in the UK on 31 December 2020, the EU trade mark courts in the UK retained full jurisdiction to deal with those issues thereafter. The Supreme Court held that they did.[64]Chapter X, comprising Articles 122 to 135, of the EU Trade Mark Regulation contains similar provisions to Title IX of the CD Regulation. Article 128(2) of the EU Trade Mark Regulation corresponds to Article 86(5) of the CD Regulation, although there is a slight difference in wording. Paragraph 20(2) of Schedule 2A to the Trade Marks Act 1994 inserted by the 2019 Regulations corresponds to paragraph 9(2) of Schedule 1A to the 1949 Act. Paragraph 20(2) provides that Chapter X of the EU Trade Mark Regulation continues to apply to pending proceedings except for Articles 128(2), (4), (6), (7) and 132.[65]Although much of the reasoning of Lord Kitchin, with whom the other members of the panel agreed, in section X of his judgment is germane to the present issue, I shall confine myself to citing what he said at [439], which applies mutatis mutandis to Article 86(5) and paragraph 9(2):
“… 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.”
[66]More generally, my conclusion is supported by the considerations explained by Lord Reed in his concurring judgment:
“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

[67]Zaun accepts that ground 2 stands or falls with ground 1. It is therefore unnecessary to discuss it.

Ground 3

[68]Ground 3 has two limbs. The first limb is that the judge was wrong to hold that paragraph 9(2) of Schedule 1A to the 1949 Act does not disapply the common law principles of res judicata and abuse of process. The second limb is that the common law principles do not apply to the UKRRD in any event.[69]Given my conclusion on ground 1, the first limb falls away. By virtue of Article 86(5), the High Court has no jurisdiction to entertain Zaun’s counterclaim for a declaration of invalidity of the RCD. Accordingly, the Claimants do not need to rely on the common law. I would nevertheless observe that it is difficult to see how paragraph 9(2) of Schedule 1A to the 1949 Act can have been intended to disapply common law principles when it contains no reference to them. This is particularly so if it is indeed the case that the rationale for the exception is that English law should apply rather than EU law. Furthermore, the common law principles are not coextensive with Article 86(5).[70]That leaves the second limb. This raises two questions. The first question is whether Zaun’s counterclaim for a declaration of invalidity of the UKRRD is barred by Article 86(5) of the CD Regulation. The judge held that it was, but I respectfully disagree. Article 86(5) only concerns counterclaims for declarations of invalidity of registered Community designs. For obvious reasons, it does not apply to counterclaims for declarations of invalidity of national registered designs such as UK re-registered designs. Furthermore, as explained in paragraph 40 above, this counterclaim is not brought pursuant to the jurisdictional and other provisions of the CD Regulation, but pursuant to the domestic jurisdiction of the High Court and the 1949 Act. This conclusion is consistent with that of Lord Kitchin in Sky v SkyKick at [451](v).[71]The second question is whether this counterclaim is barred by res judicata or abuse of process. Zaun contends that it is not, because the UKRRD is a distinct national right, the validity of which has never been considered by the EUIPO. Zaun accepts that the effect of paragraph 9A of Schedule 1A to the 1949 Act is that, if the RCD had been declared invalid as a consequence of the EUIPO proceedings, then the UKRRD would also have been declared invalid, but argues that this is irrelevant to the position at common law. Zaun points out that, as discussed in paragraphs 34 and 35 above, there is always an asymmetry between findings of invalidity and findings of “validity”.[72]I accept the premises of this contention, but not the conclusion which Zaun draws from them. It is clear from paragraph 1 of Schedule 1A to the 1949 Act that the UKRRD is to be treated as if it had been applied for, and registered, under the 1949 Act. It is therefore a distinct legal right which came into existence on IP completion day. Moreover, it has a different territorial scope to the RCD. It is also correct that there is no provision in Schedule 1A which mirrors paragraphs 9A in a case where the EUIPO proceedings result in the rejection of the application for a declaration of invalidity, i.e. no provision which requires the UKRRD to be treated as valid. Moreover, that absence is explained by the asymmetry noted above. The fact remains, however, that the UKRRD is subject to the same substantive conditions for validity as the RCD and, save in territorial terms, it confers the same substantive rights in respect of infringements. Thus the UKRRD was aptly described by counsel for Zaun as a clone of the RCD. Furthermore, in the words of paragraph 9(4), the UKRRD “derives from” the RCD. The parasitic nature of a re-registered design explains why paragraph 9(4) empowers the High Court to declare it invalid if it declares the parent registered Community design invalid. The sole reason for the creation of such clones was to avoid a loss of rights with respect to the territory of the UK by proprietors of registered Community designs due to Brexit because registered Community designs are unitary rights covering the territory of the Member States of the EU. For these reasons the UKRRD is in substance the same as the RCD albeit that it is a distinct legal right. This is why Zaun was able to plead its case on the validity of both the RCD and the UKRRD by reference to a single set of particulars of invalidity.[73]Accordingly, I agree with the judge that the principles of res judicata and abuse of process apply to preclude Zaun re-litigating the validity of the UKRRD. More specifically, I consider that Zaun’s counterclaim is precluded by issue estoppel. As explained above, Zaun relies upon the same grounds of invalidity with respect to the UKRRD, albeit arising under the 1949 Act rather than under the CD Regulation, as it does in relation to the RCD. Zaun accepts that the differences in the prior designs being relied upon and in its argument with respect to the question of functionality do not prevent the application of issue estoppel. Thus the issues are the same, and Zaun is prevented by issue estoppel from re-litigating them before the High Court. (If Zaun had relied upon the difference in the prior designs, then there might well not have been an issue estoppel with respect to novelty and overall impression, but there would probably have been an objection based on Henderson v Henderson. As it is, it is not necessary to consider those questions.)[74]Counsel for Zaun suggested for the first time in oral argument that there was a parallel between the present situation and the determination by different national courts of the validity of national designations of European patents (i.e. so-called “bundle” patents). Because this suggestion was only raised for the first time in oral argument, no authorities or commentaries on the question were cited. In those circumstances I do not propose to discuss the applicability of the doctrine of issue estoppel in such cases. It suffices to say that there is in any event a clear distinction between the present situation and that concerning European patents. Different designations of European patents are always independent legal rights, albeit obtained by means a single application. One designation does not derive from another, still less is one designation brought into existence in order to replace another. Furthermore, although they are subject to the same substantive conditions of validity, which are harmonised by the European Patent Convention, infringement is governed by the national laws, which have only been partially harmonised and that only in some of the Contracting States.

Conclusion

[75]For the reasons given above I would dismiss the appeal.[76]I agree.[77]I also agree.