“Been there, judged that”: Skykick and Praesidiad reinforce res judicata in Brexit design rights

In a recent case, the Court of Appeal referenced the Supreme Court's decision in Sky v Skykick to find that a claimant who had already unsuccessfully sought a declaration of invalidity for a pre-Brexit EU design right could not pursue the same declaration in respect of the corresponding UK design right.  

Background

Praesdidiad Holding BVBA ("Praesidiad") is the owner of the registered community design No. 000127204-0001 (the "RCD"). In 2018, Praesidiad accused the Zaun Ltd ("Zaun") of infringing the RCD.

Zaun filed a declaration of invalidity at the EUIPO in defence of the infringement claim. However, following a number of unsuccessful appeals, the Court of Justice of the European Union upheld the validity of the RCD and refused Zaun any further appeal.

Praesidiad and a second claimant, who is a licensee of the RCD ("Guardiar Europe"), served amended particulars of the claim in 2023. Zaun's defence and counterstatement again challenged the validity of the RCD – this time also contesting the validity of Design No. 90001272040001 ("the UKRRD"), which is the equivalent re-registered UK Design that had automatically come into existence following Brexit.

Comparable UK design rights – what are they?

To maintain protection for design owners following Brexit, the UK introduced comparable UK design rights. These rights mirror the scope and terms of the EU designs as they stood and came into existence on 31 December 2020 (known as "IP Completion Day"). Their creation allowed EU design owners to maintain their protection in the UK without having to refile.

Why does this matter?

Ordinarily, Zaun would have been unable to seek a second declaration of invalidity for the design because of the doctrine of res judicata (the fundamental principle of law that prevents parties from relitigating an issue that has already been decided in court). However, post-IP Completion Day, principles like res judicata entered a realm of uncertainty. In other words, it was unclear whether Brexit would open the door for the re-litigation of issues, given the very different legal landscape.

This issue had come up previously in the Skykick case. In his judgment, Lord Reed stated that it was a "basic principle of legal certainty" 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." This, in essence, served to conclude that the EU trade mark courts in the UK retained full jurisdiction to deal with any infringement proceedings for EU trade marks and designs that were pending in the UK on 31 December 2020.

The decision

The High Court initially rejected the counter claim. However, Zaun appealed the High Court's decision on a number of grounds. One of the key grounds was that the High Court was wrong to determine that a counter claim could not be brought because of res judicata because the UKRRD's validity had never been considered by the EUIPO.

The Court, citing the decision in Skykick, agreed with the High Court that the UKRRD was subject to the same conditions as the RCD. As it "derived from" the RCD, it was to be considered invalid if the RCD was, and so, res judicata applied.

Takeaways

This case settles a significant point of contention post Brexit, confirming that defendants are not able to use cloned intellectual property as a second line of defence.

It further highlights the Court of Appeal's commitment to enforcing principles (such as res judicata and abuse of process) issued by EU legal bodies where these relate to rights converted into UK law. It ensures that parties cannot evade prior decisions by re-litigating issues under different guises.