A "Special" Trade Mark and its effects
Introduction
Readers will recall that, in April 2006, the Vice Chancellor of the High Court held that a person may be prevented from litigating issues before the English Courts in trade mark disputes which have been, or should have been, dealt with in previous trade mark opposition proceedings before the UK Trade Marks Registry.
Until this judgment it had been an accepted practice that a trade mark owner could oppose an application for a UK registered trade mark and, even if their opposition was unsuccessful, could still apply to the High Court to invalidate the mark once the mark had been registered.
The practical consequence of the Vice-Chancellor's decision was that trade mark owners would only have one "bite at the cherry" when it came to trying to prevent a third party from registering a trade mark which, in their view, conflicted with their earlier trade mark rights.
In January 2007, the Court of Appeal overturned the Vice Chancellor's decision. This will be a huge relief to trade mark owners and practitioners.
The Facts
L'Oréal opposed an application to register the trade mark SPECIAL EFFECTS, filed by Special Effects Limited. The opposition process ran its course and the Hearing Officer found in favour of the applicant. The mark SPECIAL EFFECTS was therefore registered.
Special Effects Limited then sued L'Oréal, claiming that L'Oréal had infringed the mark SPECIAL EFFECTS by using the brand name SPECIAL FX. L'Oréal contended that the mark was invalid and should be removed from the UK Trade Marks Register.
The Vice Chancellor held that L'Oréal was precluded from challenging the validity of the SPECIAL EFFECTS registration. He held that L'Oréal had unsuccessfully attacked the validity of the SPECIAL EFFECTS mark during the opposition proceedings before the UK Trade Marks Registry and were barred from again challenging the registration before the Court. L'Oréal could not re-litigate points or issues which were either raised in the opposition proceedings, or which might or should have been. He declared that the public interest was in finality and litigants should not be faced with the same claim twice.
The Court of Appeal
The Court of Appeal overturned the Vice Chancellor's judgment. It held that L'Oréal was not precluded from challenging the validity of the SPECIAL EFFECTS registration before the Court. Just because L'Oréal had unsuccessfully attacked the validity of the mark during the opposition proceedings before the UK Trade Mark Registry, this did not mean they were barred from again challenging the registration before the Court.
The International Trade Mark Association ("ITMA") intervened in the appeal before the Court of Appeal, in support of L'Oréal. ITMA was concerned that if the Vice Chancellor's decision was upheld the practice in relation to opposition proceedings would change in one of two ways: either parties would not attempt to oppose or, if they did oppose, they would seek to do so in a much more substantial way, similar to the conduct of litigation in Court. ITMA felt that such developments would not benefit trade mark owners. The Institute of Trade Mark Attorneys also made written submissions to this effect.
The Consequences of the Court of Appeal Decision
The decision will be welcomed with relief by trade mark owners and practitioners.
It means that brand owners do not need to change their current strategy and practice when conducting oppositions before the UK Trade Mark Registry. They will continue to be allowed two "bites of the cherry" and will be able both to oppose a trade mark application before the UK Trade Marks Registry and, should the mark become registered, to apply to have it invalidated before the Court in any subsequent legal proceedings.
Historically, opponents in trade mark opposition proceedings brought before the UK Trade Marks Registry have not spent as much time, effort and money pursuing opposition proceedings as they have done when conducting litigation before the Courts (i.e. where the successful party can recover higher costs awards). Thankfully, in the light of the Court of Appeal's decision, this approach will not have to be reconsidered and greater resources will not automatically need to be committed when pursuing opposition proceedings.
Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.
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