Case No. IP-2018-000201

52.With regard to the first question of law identified above, I take the view that the event giving rise to the disclosure of a design must take place within the territory of the Community in order for UCD protection to come into being within the meaning of art.11. Art.11(1) refers to a design first made available to the public ‘within the Community’ whereas art.5(1)(a) does not. As I have discussed, art.11(1) is not free from ambiguity but I do not accept that the words ‘within the Community’ can be dismissed as mere surplusage, as Mr Tritton submitted. Moreover, art.110(a)(5) would be of no effect at all unless it was intended to clarify this as the correct interpretation of art.11. I must assume that the European legislature did not have it in mind to enact a pointless piece of legislation and no conceivable purpose for art.110(a)(5) was identified save that given to it by the Federal Supreme Court. 53.As to the second question of law, my impression is that the point was not dealt with directly in Gebäckpresse. That may be the fault of the translation provided, but there is a clear inference to be drawn from the judgment as to what the Federal Supreme Court’s view was. I am in agreement with that inferred view. In my judgment, novelty under art.5(1)(a) falls to be assessed as of the date on which UCD protection comes into being under art.11. The words ‘the design for which protection is claimed’ in art.5(1)(a) supports this construction. 54.Although not put this way by Mr Tritton, I think the burden of his argument was the words I have just quoted should be interpreted to mean ‘the design for which protection is now claimed’. In other words, the design in issue should be detached from the specific UCD being considered in art.5(1)(a). That is not a straightforward reading of art.5(1)(a). Also, once the design is detached from the UCD under contemplation, difficulties follow. If an identical design has been created and made public on different dates by different designers, it would not be easy to know which of them is the design in issue and thereby to know the relevant date for assessing novelty. Alternatively, if the date on which the design was first made available to the public is all that matters, no design could ever lack novelty. 55.With regard to TRIPs, I can see that it is arguable that entities domiciled in the EU are more likely to market newly designed articles first within the Community and thereby to gain UCD protection for the design, as opposed to those domiciled outside the EU who may be more likely to market first outside the Community and thereby risk depriving themselves of UCD protection. However, the European legislature has not in the past been averse to a Fortress Europe approach to legislation and this has been upheld by the CJEU. An example is the adoption of European, as opposed to international, exhaustion of IP rights. This approach tends to favour the protection of the home European market of entities domiciled in Europe, see for example Zino Davidoff SA v A&G Imports Ltd (Joined Cases C-414/99 to C-416/99) EU:C:2001:617; [2002] Ch 109.56.I did not find Tod’s SpA to be greatly of assistance since it concerns discrimination within the EU contrary to art.12 EC (now art.18 TFEU) and its potential effect on intra Community trade. 57.It follows that I respectfully share the view of the Federal Supreme Court that in order for a design to be afforded UCD protection, the event giving rise to the first disclosure of the design – such as the marketing of a product made according to the design – must first take place within the territory of the EU. If before that date there has been an event outside the EU giving rise to the design being disclosed, in circumstances such that the event could reasonably have become known in the normal course of business to the relevant circles in the Community, the design for which protection is sought will lack novelty. 58.However, I do not agree that this view is sufficiently free from doubt such that the two points of law are collectively acte clair.