UK trade mark invalidity decisions have estoppel effect
The UK Intellectual Property Office (UK IPO) has issued a practice notice drawing attention to the potentially far reaching effect
of its decisions in trade mark invalidity cases, which can now have a res judicata effect. Therefore if a decision of the UK IPO on
whether a trade mark is invalid is not appealed, it is no longer possible to bring proceedings in the High Court regarding the same
issues. The notice advises that in the case of trade mark invalidity actions before the UK IPO that are based on relative grounds,
i.e. where the applicant is requesting that a trade mark be removed from the register because of its earlier mark or unregistered
right, a full oral hearing will be required.
This practice announcement has arisen as a result of a UK High Court decision in the case of W and SM Evans v Focal Point Fires
Plc. Focal Point is a sizable UK manufacturer of fuel effect fires and in 2000 it registered the trade mark Firecraft in the UK.
William and Susan Evans had traded, as a partnership, under the name Firecraft, in the field of bespoke fireplaces since the 1990s.
The partnership had not itself sought registration of the mark Firecraft, but in 2007 challenged the Focal Point registration. It
was argued that the registration should not have been granted because at the time the application for registration was filed the
partnership had established unregistered rights in the Firecraft mark, which prevented the use of the mark by Focal Point under
the law of passing off.
The outcome of the invalidity action before the UK IPO was that the registration was declared invalid. Focal Point did not appeal and its registration of Firecraft was therefore removed from the UK trade mark register. Focal Point continued to use the mark on an unregistered basis and the partnership decided to launch an action for passing off before the UK High Court.
It was decided that the UK IPO had already ruled on the passing off issue when declaring the UK registration invalid on the basis
of the prior unregistered rights, because by finding the registration invalid the partnership’s unregistered rights under the law of
passing off were acknowledged. Therefore the principles of issue estoppel and abuse of process prevented re-litigation of the
point. As a result, summary judgement in favour of the partnership was granted.
The issue of the status of decisions of the UK IPO in inter partes matters, such as invalidity and opposition actions, has been the subject of debate for some time. As recently as 2007, the UK Court of Appeal decided in Special Effects v L’Oreal that UK IPO decisions in opposition matters do not normally give rise to estoppel and re-litigation between the parties on the issues involved can be possible.
The recent judgement clearly draws a distinction between invalidity and opposition proceedings and suggests that, so far as
invalidity is concerned, decisions by the UK IPO in cases based on relative grounds will cause a res judicata effect. Therefore a UK
IPO decision as to whether or not a mark should be removed in view of an earlier mark or unregistered right will have
consequences in subsequent proceedings relating to the same marks and rights.
As a result, parties contemplating, or involved in, trade mark invalidity proceedings before the UK IPO will need to take into account the implications of a negative judgement. If launched or defended, it seems clear that such proceedings will become more costly, complicated and hard-fought in view of the serious implications of an invalidity decision for subsequent actions for infringement or passing off.
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