Gift Focus - Nov/Dec 2019 (Issue 116)

99 ACID To find out more, visit acid.uk.com received a reply from the Minister of Intellectual Property Rt. Hon Chris Skidmore, “Finally, regarding unregistered designs post Brexit, the Statutory Instrument makes provision for the UK to recognise disclosure in the EU for the purpose of acquiring the equivalent UK right to the Unregistered Community Design. However, the UK doesn’t have the power to mandate that the EU will recognise disclosure in the UK, and this is therefore a matter for future negotiation.” ACID commented further that the UK have had three and a half years to address this with their EU counterparts and doesn’t find the reply very helpful for UK designers. ACID comment, “Judge Hacon’s decision to refer this case to the CJEU is timely. ACID has sent compelling evidence to the Government consistently for more than three years requesting clarity and/or guidelines, which thus far has been unforthcoming. We had also asked if reciprocity could be negotiated between the UK and EU27 regarding UDR. PMS International is no stranger at the centre of IP news having been involved in the Magnatex (Trunki) case. The case went all the way to the Supreme Court of Justice. ACID and many others thought it was a very unfair decision. According to the IPKat, “UK academic opinion is divided on this topic. Stone (European Design Law) and Bently, Sherman, Gangjee and Johnson (Intellectual Property Law) accept the view of the Bundesgerichtshof, in spite of potentially severe effects on designers if the legislative scheme is indeed as protectionist as it appears. In contrast, Howe, St Ville and Chantrielle (Russell- Clarke and Howe on Designs) consider that a disclosure outside of the EU could trigger UCD protection, as long as the design could reasonably have become known in the EU as a result in accordance with Article 7(1).” Designers in the UK will be anxious to learn about whether the CJEU will make a decision as, hopefully, this case may provide more certainty on what’s meant by simultaneous disclosure. As the majority of designers rely on unregistered EU and UK designs, this will be critical. Whilst the obvious route is to register designs in the UK and EU, which is inexpensive, for many it’s simply not worth registering designs because it’s costly and time prohibitive to take legal action because the Court process is so complicated and unwieldy. CASE HISTORY BMHT was exhibiting the toy design at the Mega Fair in Hong Kong in October 2017 and then took the new designs to exhibit at a trade fair in Nuremburg, Germany, in January 2018. However, PMS claimed that because the Hong Kong Fair was known as a venue for such toy products, visiting EU purchasers with a special interest in toy design, would, therefore, be aware of the design. If this were the case, they would not be able to claim novelty.