The ruling came swiftly. On Friday, the UK Court of Appeal dismissed Zaun’s appeal against a UK High Court ruling (case ID: [2024] EWHC 1549 (Pat)) just nine days after the hearing.
The case concerns high-security fence posts used to protect facilities such as oil fields. The dispute began in March 2018 when Betafence, later renamed Praesidiad, sued competitor Zaun for infringement of Community design right RCD 127204-0001. Both companies manufacture high-security fences. While the products are highly technical and Praesidiad holds relevant patents, this case focuses on a registered Community design (RCD) and the equivalent re-registered UK Design (UKRRD).
According to the Court of Appeal’s ruling, Zaun cannot have the validity of the RCD and the UKRRD reviewed again. The UK High Court may now continue with Praesidiad’s original infringement suit — eight years after filing. However, this depends on whether Zaun seeks a review of the judgment by the UK Supreme Court.
Brexit-related elements
When the case began, Brexit had been decided but not yet completed. The IP-related provisions of the Withdrawal Agreement, including regulations on transitioning from RCDs to UKRRDs, came into force at the end of 2020.
Initially, Zaun questioned the validity of the RCD with the EUIPO. In 2022, the General Court of the European Union confirmed Praesidiad’s RCD. But in 2023, Zaun launched a second attack against both rights, the RCD and the UKRRD, at the UK High Court.
In 2024, the same court ruled in Praesidiad’s favour, striking out Zaun’s counterclaim. The court confirmed that the EUIPO’s final validity decision, upheld by res judicata principles, bars Zaun from relitigating in the UK. The Court of Appeal has now unanimously confirmed this ruling.
Presiding judges Nicholas Underhill, judge rapporteur Richard Arnold and Peter Jackson heard the case in London on 1 May. JUVE Patent was in attendance and reported on the hearing.
The judges directed many questions at Zaun’s lawyer Mark Vinall from Blackstone Chambers and solicitors Geoff Hussey and Peter Lyonsnow from Venner Shipley. At times, the lawyers found themselves in what resembled a cross-examination, underlining the far-reaching significance of the Brexit element.
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- Richard Arnold
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- Mark Vinal
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- Geoff Hussey
Swift and clear ruling
The ruling was unequivocal. Richard Arnold, known for his swift and concise rulings, states that the sole reason for creating the UKKRD “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.”
Furthermore, Arnold agrees with the High Court judge “that the principles of res judicata and abuse of process apply to preclude Zaun from 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.”
This means Zaun cannot have the validity of Praesidiad’s design right reviewed twice, unless the case reaches the UK Supreme Court and the latter ultimately accepts Zaun’s arguments.
Nuanced interpretation
However, the Court of Appeal judges note a distinction regarding the UK re-registered design, which is an independent right “that is to be treated as if it had been applied for, and registered”, and can therefore undergo an independent validity review.
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- Benet Brandreth
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- Ewan Grist
However, Zaun cannot pursue this avenue because the common law principle of res judicata prevents a second revocation action.
This marks Praesidiad’s second victory. Benet Brandreth from 11 South Square served as barrister in both instances. A London-based Bird & Bird team led by partner Ewan Grist retained him. Of counsel Tristan Sherliker also attended the oral hearing.