Case No. IP-2018-000201

9.A design cannot be protected as a UCD unless it is new, see art.4(1). A design is new if no identical design has been made available to the public before the date on which the design for which protection is claimed was first made available to the public, see art.5(1)(a). An ‘identical’ design includes one which differs only in immaterial details, see art.5(2). 10.Pausing there, art.5(1)(a) taken in isolation suggests that a design can never prior publish itself. A design cannot have been made available to the public before the date on which it was first made available to the public. 11.That said, the date set out in subparagraph (1)(a) is the date on which the design for which protection is claimed has first been made available to the public. This may mean (it is PMS’s case) that the correct date for assessing novelty can be identified only by reference to a UCD which has come into being. If that is right, art.11 must be taken into account. 12.Pursuant to art.11(1), the period of protection of a UCD runs for three years from the date on which it was first made available to the public within the Community. The words I have italicised provide a territorial limitation not present in art.5. It follows that no design can be protected as a UCD unless and until it has been made available to the public within the Community. 13.There is an ambiguity. It arises from the distinction between the ‘event’ of disclosure referred to in art.11(1) – the publication, or exhibition and so on – and the disclosure in the sense of the design coming to the attention of the relevant circles in the Community. The exhibition of a design, whether within or outside the EU, would qualify as a relevant ‘event’ but it may or may not give rise to disclosure in the latter sense. That will depend on whether the requirements set out in art.11(2) are satisfied. The ambiguity is this: does art.11 require that the event takes place within the Community, or does it require only that the event, wherever it happens, could reasonably have become known to the relevant circles within the Community?14.Art.11(2) explains what ‘made available to the public within the Community’ means. There are three requirements: (1)At least one ‘event’ must have taken place, being the publication or exhibition of the design, use of the design in trade, or other form of disclosure of the design. (2)The event must have been such that it could reasonably have become known to the circles specialised in the sector concerned, operating within the Community. (3)The disclosure relied on must have gone further than a disclosure to a third person under explicit or implicit conditions of confidentiality. 15.As of the first date on which all three requirements are satisfied in relation to a design, that design is protected as a UCD. Protection will run for three years. 16.Going back to art.5(1)(a), the meaning of ‘made available to the public’ in that article is explained in art.7(1). Art.7(1) provides for a presumption – a design is deemed to have been made available to the public if at least one ‘event’ has occurred – but the presumption is rebuttable by the alleged infringer proving that the event could not reasonably have become known to the relevant circles within the Community. This view of art.7(1) – providing for a presumption which may be rebutted – has been explained by the General Court for instance in Visi/one GmbH v EUIPO (Case T74/18) EU:T:2019:417 at [23]-[24]. (The General Court appears to have assumed that if the event has become known to the relevant circles, the disclosure cannot have been made in confidence.) 17.Although art.7(1) is worded to set up this rebuttable presumption, the relevant events are defined in identical terms to those in art.11(2), as are the two exceptions. In relation to UCD protection, there seems to be no distinction between making a design available to the public within the meaning of art.5(1)(a) and making a design available to the public within the meaning of art.7(1). 18.There is a difficulty with art.5(1)(a) when read in conjunction with art.7(1). The term ‘made available to the public’ is used twice in art.5(1)(a), first to define the criterion which governs novelty – whether the design has been made available to the public – and secondly to set the date as of which this is to be assessed. The term is defined in art.7(1). Reading that definition on to the term’s first use in art.5(1)(a) makes sense: novelty will be lost if the design has been published…or otherwise disclosed before the date defined in subparagraph (a) of art.5(1), subject to the stated exception in relation to the circles specialised in the sector concerned. Reading the art.7(1) definition on to the term’s second use leads to circularity and no sense: the date in subparagraph (a) is the date on which the design for which protection is claimed was first published…or otherwise disclosed before the date defined in subparagraph (a). I assume, therefore, that the art.7(1) is to be read only on to the first use of ‘made available to the public’ in art.5(1)(a). 19.I should make a further clarification. The second requirement of art.11(2) set out above is that the event could reasonably have become known to the relevant circles in the Community. Taken literally it requires that the event, as opposed to the design, could reasonably have become known. The events contemplated in arts.7(1) and 11(2) are acts of disclosure of the design. If the act of disclosure was done in confidence the design will not have been made available to the public, see art.7(1) final sentence and art.11(2) final sentence. On the other hand, if there has been any kind of public act of disclosure of the design, i.e. an act not done in confidence, there is a presumption that the design is deemed made available to the public. Thus, on the face of arts.7(1) and 11 there is no rebuttal of that presumption where the relevant circles in the Community could reasonably have known that the public act of disclosure of the design in issue has taken place, even if they were not made aware of the design at that time. This is a fine distinction. However, that public act of disclosure may fix the date on which the design is deemed to have been made available to the public. 20.In Magmatic Ltd v PMS International Ltd [2013] EWHC 1925; [2014] RPC 29, Arnold J took the view (at [36]) in the context of art.7(1) that the correct criterion is whether the design could reasonably have become known to the relevant circles in the Community. The point was not central to subsequent appeals in Magmatic, either in the Court of Appeal or the Supreme Court and so was not considered further. 21.Since the distinction is not important in the present case either, I will use the language of arts.7(1) and 11(2), referring to the requirement that the event could reasonably have become known to the relevant circles in the Community. 22.I turn to art.110(a)(5) – by which I will mean its second sentence, the only one quoted above; the first is not relevant. This second sentence was tagged on to the Act concerning the conditions of accession to the EU of the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and the Slovak Republic. It was published on 23 September 2003 (OJ L236/33) and seems to have come into force on 22 November 2003. It is not clear what prompted the enactment of art.110(a)(5), although its wording implies an intent to clarify art.11 rather than to amend art.11. 23.The wording also suggests a wish to emphasise that a design will not enjoy protection as a UCD unless it has been made public within the territory of the Community. Yet in this context the Community is a territorial concept anyway (see for instance the first recital of the Design Regulation), so it is not immediately clear what that adds. 24.Communication No.5/03 of the President of the OHIM dated 16 October 2003 (OJ OHIM 2004, 69) did not shed much extra light. Section II/6 of the Communication included: “Finally, Article 11 [of the Design Regulation] is qualified by the new Article 110(a)(5) which provides that, pursuant to Article 11, a design which has not been made public within the territory of the Community shall not enjoy protection as an unregistered Community design.” 25.One possibility is that art.110(a)(5) was intended to address the ambiguity in art.11(1) discussed above. (Like the General Court in Visi/one, for simplicity of discussion I will assume hereafter that if the relevant event could reasonably have become known to those circles, the disclosure was not made under any condition of confidentiality.) The intention behind art.110(a)(5) may have been to clear up the ambiguity, clarifying that the former interpretation of art.11(1) is correct. This view of art.110(a)(5) has gained favour in Germany.