Significant appeal clarifies design rights landscape

The recent case of Praesidiad Holding BVBA & Anor v Zaun Limited has emerged as a key examination of intellectual property law in the UK, particularly focusing on registered community designs (RCD) and their implications in a post-Brexit environment. The Court of Appeal (Civil Division) delivered its judgment on 9 May 2025, addressing an appeal lodged by Zaun Limited to contest the validity of a registered community design following an earlier ruling that dismissed its counterclaim.

At the heart of this legal dispute lies an appeal against the decision made by Mr Justice Zacaroli of the High Court of Justice on 22 July 2024, which upheld that Zaun was barred from challenging the RCD's validity and the UK re-registered design based on prior administrative determinations by the EU Intellectual Property Office (EUIPO). Zaun asserts that legislative changes post-Brexit grant it grounds to contest the validity within the UK legal framework, raising intricate legal debates surrounding design rights.

The procedural history illustrates that Zaun initially challenged the RCD in 2018 alleging infringement, leading to a declaration of invalidity at the EUIPO. Following a sequence of appeals through European courts, these earlier rulings brought the validity of the design rights into focus. The High Court's decision to reject Zaun's counterclaim was grounded in principles of judicial economy and finality as expressed in Article 86(5) of the CD Regulation, which generally prevents parties from re-litigating design validity matters that have been definitively determined.

The ongoing appeal introduces critical questions concerning the interplay of domestic UK law and the residual EU laws impacting design rights, especially as distinctions between the RCD and UK re-registered designs are scrutinised. Two central aspects of the judgment include the implications of the Withdrawal Agreement on existing rights and whether Zaun's counterclaim could extend outside the confines of Article 86(5) of the CD Regulation to align with domestic design law under the Registered Designs Act 1949.

In its examination, the court scrutinised whether Zaun could bypass existing legal conclusions associated with the RCD to introduce claims about the UK re-registered design, given the homologous yet distinct nature of both designs. Judges Lord Justice Underhill and Lord Justice Arnold upheld that principles such as res judicata and abuse of process prevent Zaun from revisiting matters already examined, thus ensuring legal consistency and alleviating courts from unnecessary repetitive litigation.

Furthermore, the court addressed the legislative dynamics enacted by the European Union (Withdrawal) Act 2018 and its subsequent amendments, confirming that the provisions laid out in this framework effectively govern pending proceedings. The court concluded that although many design rights remain intact, the procedural barriers defined by EU directives retain influence in re-litigation scenarios, barring exceptions specified by modified legislative frameworks.

Ultimately, this ruling signals significant implications for the influence of Brexit on intellectual property rights within the UK and reinforces established mechanisms safeguarding against the re-litigation of resolved disputes. By dismissing Zaun's grounds of appeal, the Court of Appeal strengthens the principles of legal certainty in this evolving area of intellectual property law.

In conclusion, the Praesidiad Holding BVBA & Anor v Zaun Limited case encapsulates the intersection of traditional legal doctrines and modern legislation, highlighting the delicate balance between innovation, rights protection, and legal efficiency in an increasingly intricate legal landscape. This ruling not only clarifies the Court’s position on design rights and their validity but also establishes crucial precedents for future cases in this transformed jurisdiction.

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