Case No. IP-2018-000201

41.Mr Aikens rightly emphasised the highly persuasive status of a judgment of the German Federal Supreme Court on a point of EU law. It follows from Gebäckpresse, he argued, that on the agreed facts of the present case, at the relevant date for assessing the novelty of the five UCDs in issue, January 2018, all lacked novelty because the designs had been disclosed at the Mega Show in the previous October and this event was known to the relevant circles in the Community. 42.Mr Tritton submitted that the Federal Supreme Court was wrong and that either of two alternative views of the law should be preferred. The first was that the date for determining both (a) when the UCD comes into existence and (b) the novelty of a UCD is the date on which an event of disclosure of the design first occurs, anywhere, in circumstances such that the event could reasonably have become known to the relevant circles in the Community. 43.The alternative view of the law advocated by Mr Tritton was that there are two dates to be considered. A UCD comes into existence as of the date of the first event of disclosure which takes place within in the Community. However, when it comes to assessing the novelty of the protected design, this must be done by reference to the date on which the design was disclosed for the first time anywhere in the world in circumstances such that the event could reasonably have become known to the relevant circles in the Community. Mr Tritton called this the ‘split date’ view. 44.Mr Aikens pointed out that the split date view figured nowhere in BHTB’s pleadings and that PMS had not prepared its case to meet that argument, raised for the first time in Mr Tritton’s skeleton argument. 45.I cannot see that PMS could have filed evidence to deal with the split date argument – it is an argument of law. Mr Aikens was able to make fluent submissions on the point even though he did not have much time to mull it over. Should it prove necessary I would require BHTB to amend its pleadings but in the meantime I will consider the argument in favour of a split date. 46.In support of his first construction of art.11, Mr Tritton argued that art.110(a)(5) is opaque and plainly does not amend art.11. The words used in the Design Regulation to assess whether a design has been made available to the public in art.11(2) are the same as those used for the same purpose in art.7(1). Therefore the words ‘within the Community’ in art.11(1) are mere surplusage. The date on which UCD protection commences must be the same as that on which the novelty of the design is to be assessed. It is clear from art.5(1)(a) that this is the date on which the design was first made available anywhere in the world provided that the event could reasonably have become known to the relevant circles in the Community. 47.Alternatively, Mr Tritton submitted, the split date view is correct. Even if art.110(a)(5) drives one to the view that UCD protection cannot start until an event of disclosure has taken place within the Community, it is significant that, in contrast with art.11(1) neither art.5 nor the first part of art.7(1), which set up the presumption, require that the design must made be available within the community. The legislature must have intended that novelty is to be assessed as of the date of the first disclosure anywhere the world. 48.Finally, Mr Tritton relied on The Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPs’). TRIPs was approved by Council Decision (EC) 94/800 of 22 December 1994 and it was common ground that since the EU is a party to the Agreement, the Design Regulation must, so far as is possible, be construed consistently with TRIPs. 49.Art.3 of TRIPs provides that, subject to stated exceptions not relevant here: “Each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property, …” 50.Mr Tritton argued that if the view of the law taken in Gebäckpresse were correct, it would work in favour of those who first disclose their designs by means of an event within the EU and that this would be a covert form of discrimination in favour of EU nationals. 51.Mr Tritton also referred me to the judgment of the CJEU in Tod’s SpA v Heyraud SA (Case C-28/04) EU:C:2005:418.