Does A Design Have To Be Disclosed First In The EU To Benefit From Community Unregistered Design Right?

A case before the Intellectual Property Enterprise Court (IPEC) has raised this important question in a direct reference to the Court of Justice of European Union. Not only is an answer to this question of crucial importance to design protection in the EU in its widest sense, with the Brexit on the horizon it could impact where UK designers disclose their designs for the first time, the UK or EU in a post Brexit world.

In July the Intellectual Property Enterprise Court (IPEC) heard a case where, unusually, no facts of the case were in dispute - the issues raised were solely in respect of a point of European Union design law - Beverly Hills Teddy Bear Company v PMS International Group plc [2019] EWHC 2419 (IPEC)

The Beverly Hills Teddy Bear Company (BHTB) is a Californian company which sells animal-like toys called 'Squeezamals'. BHTB sought to protect the designs of the toys by means of registered community designs, unregistered community designs (UCDs) and copyright in the design drawings. Six Squeezamals were relevant to this action, being a dog, monkey, panda, penguin, unicorn and a cat.

The defendants, PMS International Group PLC, (PMS) were seeking summary judgment which would have the effect of striking out part of the claim by BHTB. The case concerned only UCDs. Both sides agreed that five of the six toys (all but the unicorn) were first shown to the public in October 2017 at a trade fair in Hong Kong. The toys were subsequently exhibited for the first time in the EU at the Nuremberg Toy Fair in Germany in January 2018.

PMS argued that the relevant date for assessing the novelty of a UCD was the date on which the UCD comes into being, as governed by Art 11 of the Design Regulation. So, in this case, PMS contended that this would mean all five UCDs in issue first existed at the German toy fair but by then all five designs lacked novelty because of the Hong Kong fair the previous October. Therefore none of those five designs was a protected UCD.

The issue in this application was whether that was a correct analysis of the law on the agreed facts. There had been no clear authority on the point from the CJEU. Previous judgments in Germany, including one from the Federal Supreme Court, as well as divided views among text book authors and commentators in the UK gave no clarity on this matter.

The Judge considered the novelty of the designs. A design cannot be protected as a UCD unless it is new (Art 4(1) Regulation (EC) No. 6/2002 ('the...