Beverly Hills Teddy Bear Company v PMS International Plc [2019] EWHC 2419 (IPEC)
This was an application by PMS for summary judgment which would have the effect of striking out BHTB’s claim for unregistered Community design (UCD) infringement. The facts were agreed. BHTB’s toys said to embody the UCDs were first shown to the public at a trade fair in Hong Kong. The nature of the trade fair was such that the designs would have become known in the normal course of business to the circles specialising in the sector concerned, operating within the Community. The toys were exhibited for the first time in the EU at a toy fair in Germany 3 months later.
PMS argued that none of the designs was protected by UCD because by the time the UCD was said to have come into being (when the toys were exhibited at the fair in Germany) the designs lacked novelty owing to their prior publication in Hong Kong. HHJ Hacon agreed with PMS’s analysis but considered that the case raised two points of European design law which were not acte clair. The judge therefore referred two questions to the Court of Justice for a preliminary ruling. The first concerns whether, in order to give rise to a UCD, the publication of the design needs to take place within the geographical confines of the EU. The second concerns the date of assessment of the novelty of a design for which UCD protection is claimed.
Chris Aikens appeared for PMS.