Retention of Article 86(5) CD Regulation as Jurisdictional Bar on Post-Brexit Design Invalidity Challenges

Introduction

In Praesidiad Holding BVBA & Anor v Zaun Ltd [2025] EWCA Civ 591, the England and Wales Court of Appeal considered whether a defendant in pending Community design infringement proceedings could challenge the validity of a Registered Community Design (RCD) and its UK re-registered counterpart (UKRRD) after Brexit. The dispute arose between Betafence (proprietor of the RCD/UKRRD) and Zaun (defendant), following Zaun’s failed invalidity challenge before the EUIPO and the General Court. Zacaroli J had struck out Zaun’s counterclaim in the High Court, and Zaun appealed, arguing that Brexit-related legislation reopened the door to new validity challenges. The central question was whether Article 86(5) of the Community Design Regulation (CD Regulation), which bars repeat invalidity counterclaims, survived in UK law and retained jurisdictional force under the Withdrawal Agreement and domestic implementing statutes.

Summary of the Judgment

The Court of Appeal unanimously dismissed Zaun’s appeal. It held that:

Article 86(5) of the CD Regulation is a provision “regarding jurisdiction” because it limits the competence of Community design courts to entertain repeat invalidity counterclaims.
Under Article 67(1)(b) of the Withdrawal Agreement and section 7A of the European Union (Withdrawal) Act 2020, all “provisions regarding jurisdiction” of the CD Regulation continued to apply to proceedings pending at the end of the transition period—even if excluded by earlier EU-exit regulations.
Accordingly, Article 86(5) retained its bar on Zaun’s counterclaim in respect of the RCD, and the strike-out order was correctly upheld.
Separately, Zaun’s counterclaim against the UKRRD was barred by the common-law doctrines of issue estoppel (and Henderson v Henderson abuse of process), since the issues of invalidity had already been finally determined.

Analysis

Precedents Cited

The Court relied on a number of established authority to illuminate both the European law context and the English common-law principles:

Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46: Lord Sumption’s exposition of cause of action estoppel, issue estoppel and the Henderson v Henderson doctrine of abuse of process.
Dr Reddy’s Laboratories (UK) Ltd v Warner-Lambert Co LLC [2023] EWCA Civ 113: Clarification that findings of “validity” mean only that a right is “not invalid as alleged”, and distinction between repeated challenges by the same party and by different parties.
Sky plc v SkyKick UK Ltd [2024] UKSC 36: Supreme Court decision holding that EU trade mark jurisdictional provisions, including Article 128(2) (analogous to Article 86(5) CD Regulation), survived Brexit under Article 67(1)(b) of the Withdrawal Agreement.
Simon v Taché [2022] EWHC 1674 (Comm): High Court authority on the continued effect of EU jurisdictional rules in pending IP proceedings post-Brexit.

Legal Reasoning

The court approached the statutory framework in successive steps:

Retention of Title IX in Pending Proceedings: Schedule 1A paragraph 9(2) to the Registered Designs Act 1949 (as inserted by the 2019 EU-Exit Regulations) saved Title IX of the CD Regulation for pending cases, except Articles 86(2), (4), (5) and 91.
Jurisdictional Character of Article 86(5): The court held that Article 86(5) restricts the subject-matter competence of Community design courts (it prohibits repeat counterclaims), so it is properly characterised as a “provision regarding jurisdiction” within the meaning of Article 67(1)(b) of the Withdrawal Agreement.
Effect of the Withdrawal Agreement and Domestic Legislation: Under Article 67(1)(b), all CD Regulation jurisdictional provisions continued to apply in the UK to pending proceedings instituted before the end of transition. Section 7A of the Withdrawal Agreement Act 2020 gave direct domestic effect to those rights and obligations. Consequently, Article 86(5) could not be disapplied by Schedule 1A paragraph 9(2).
Common-Law Estoppel: Even if Article 86(5) did not apply, the court would still bar a fresh invalidity challenge to the UKRRD by issue estoppel, since the same invalidity grounds had been finally determined by EUIPO and the General Court.

Impact

This decision has significant consequences for post-Brexit design litigation in the UK:

It confirms that any counterclaim for invalidity of a registered Community design in proceedings pending at IP completion day remains subject to Article 86(5)’s bar on repeat challenges.
It provides certainty that EU-exit regulations cannot carve out jurisdictional provisions protected by the Withdrawal Agreement.
Litigants must carefully assess whether a prior invalidation decision has become final before attempting a counterclaim in UK courts.
The ruling strengthens the doctrine of legal certainty by ensuring that the unwinding of EU rights does not open up unlimited re-litigation of previously settled issues.

Complex Concepts Simplified

Unitary Character of RCD: A Registered Community Design is a single, EU-wide right; it cannot be fragmented by Member State.
Re-Registered Design (UKRRD): On Brexit the RCD became a new, domestic UK right (a “clone”) under the Registered Designs Act 1949, with the same substantive scope but limited to the UK territory.
Issue Estoppel: A party is prevented from re-arguing an issue that has been necessarily decided in earlier proceedings between the same parties.
Henderson v Henderson Abuse of Process: A party must put forward all available grounds and issues in the first proceeding or forfeit the right to raise them later.
Jurisdictional Provision: A rule that determines the authority or competence of a court to hear a case, as opposed to a mere procedural step or substantive defence.

Conclusion

Praesidiad v Zaun establishes that Article 86(5) of the Community Design Regulation endures as a jurisdictional bar against repeated invalidity counterclaims in pending UK proceedings, notwithstanding Brexit. By giving direct effect to Article 67(1)(b) of the Withdrawal Agreement and section 7A of the Withdrawal Agreement Act 2020, the Court preserved key EU-derived jurisdictional safeguards and reinforced the principle of legal certainty. Future litigants in design infringement cases must heed this ruling when considering whether to raise or renew invalidity challenges after having pursued them before the EUIPO or European courts.