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Actual for You - Landmark Ruling in Trade Mark Case - Test for Invalidity
Bigger Better Deal. That’s what everyone always hopes will come along. And if you are one of the few who don’t, maybe you should reconsider!Last night I was at a happy hour gathering of a bunch of my friends. There were 14 in all and we had quite a time playing musical chairs every so often to make sure everyone got to talk with everyone. We amused many of the people on the sidelines who wondered who we were and WHY we were having so much fun. The energy was contagious!At one point the conversation settled in on what people did for a living. Since I’m getting more and more into the recruiting and placement side of my business, it seems that everywhere I go, people want to get me their resume. They want me to keep them in mind as I find new job opportunities. At first I was secretly surprised that so many people seem unsatisfied with their curren
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once it had been registered.
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this trade mark invalid.
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought in relation to the same trade mark.
Comment: What this means is that an unsuccessful opponent to a trade mark opposition actio
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First Instance Decision
The claimant company, Special Effects Limited, owned the mark SPECIAL EFFECTS which was obtained by way of an assignment. The trade mark was registered pursuant to s 40(1) of the Trade Marks Act 1994 (‘the Act’) in respect of goods in class 3 (conditioners and hair lotions, and services) and class 44 (beauty and cosmetic therapies).
Before the trade mark was registered, the first defendant opposed the trade mark application on the grounds set out in ss 3(1)(a), 3(3)(b), 5(2)(b) and 5(4)(a) of the Act. The opposition was dismissed by the hearing officer.
The claimant then commenced infringement proceedings against the first defendant and its UK subsidiary (the second defendant), alleging that they had infringed the trade mark SPECIAL EFFECTS by using its brand SPECIAL FX and that the defendants were precluded from challenging the validity of the trade mark SPECIAL EFFECTS on grounds of:-
- Estoppel;
- Issue estoppel; and
- Abuse of process.
The defendants opposed these infringement proceedings on the basis that the registration of the trade mark SPECIAL EFFECTS was invalid.
The Court in the first instance had to establish the following:-
- whether either or both of the defendants was/were precluded by cause of action estoppel, issue estoppel or abuse of process from challenging the validity of the trade mark SPECIAL EFFECTS; and
- whether either or both of the defendants was/were precluded by cause of action estoppel, issue estoppel or abuse of process from alleging use of the marks complained of before the application for registration as part of the basis for a defence under s 11(3) of the Act or as part of the basis for a counterclaim for passing off.
According to Section 38 of the Act:
‘…(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.’
According to Section 47 of the Act:
‘…(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.’
The High Court held:
- There was no relevant difference between the practice and procedure of the Registry in opposition proceedings under s 38(2) of the Act and invalidity proceedings under s 47(1).
- The former took place before registration and the latter afterwards, but in each case the issues were whether any objection to registration could be made out under ss 3 and 5 of the Act.
- Therefore, the issues underlying the two sets of proceedings in the instant case were identical.
- It was established that cause of action estoppel applied where a cause of action in the second action was identical to a cause of action in the first.
- Accordingly, the defendants were subject to both cause of action estoppel and issue estoppel arising from the opposition proceedings.
- ‘…The defendants were precluded from alleging use by them of the SPECIAL FX brand prior to the application for registration for the purpose of a defence under s 11(3) of the 1994 Act or a counterclaim for passing off, as that issue had been expressly raised in the opposition proceedings and had been concluded against the first defendant.’
- The defendants were precluded from re-litigating that issue on the grounds of issue estoppel.
Overturning of Landmark Trade Mark Ruling
The Court of Appeal has overturned this landmark ruling which, from last year until now, had transformed trade mark practice. This means that disputes already heard in proceedings before a hearing officer in the Trade Mark Registry (for example in an opposition proceedings) can be reheard in the High Court.
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once it had been registered.
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this trade mark invalid.
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought in relation to the same trade mark.
Comment: What this means is that an unsuccessful opponent to a trade mark opposition action
The other day I received an e-mail from an internet marketer who was bemoaning the fact that calling people on the no-call list is now illegal and that puts such limits on marketing. He is far and away not the only one with that viewpoint; I find it almost everywhere I look. In fact, it is almost universal among marketers. You know what? I frankly don’t understand why they feel that way.If there is one marketing perspective that is more universal than hatred for the no-call list, it is that in order to be successful in the world of marketing, you have to focus. Focus on your customer. Focus on your target audience. Focus on your target niche. Focus, focus, focus. So why would you want to waste your time and energy and money and every other imaginable resource spraying your message out to people that are guaranteed NOT to want your product or s
- Estoppel;
- Issue estoppel; and
- Abuse of process.
The defendants opposed these infringement proceedings on the basis that the registration of the trade mark SPECIAL EFFECTS was invalid.
The Court in the first instance had to establish the following:-
- whether either or both of the defendants was/were precluded by cause of action estoppel, issue estoppel or abuse of process from challenging the validity of the trade mark SPECIAL EFFECTS; and
- whether either or both of the defendants was/were precluded by cause of action estoppel, issue estoppel or abuse of process from alleging use of the marks complained of before the application for registration as part of the basis for a defence under s 11(3) of the Act or as part of the basis for a counterclaim for passing off.
According to Section 38 of the Act:
‘…(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.’
According to Section 47 of the Act:
‘…(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.’
The High Court held:
- There was no relevant difference between the practice and procedure of the Registry in opposition proceedings under s 38(2) of the Act and invalidity proceedings under s 47(1).
- The former took place before registration and the latter afterwards, but in each case the issues were whether any objection to registration could be made out under ss 3 and 5 of the Act.
- Therefore, the issues underlying the two sets of proceedings in the instant case were identical.
- It was established that cause of action estoppel applied where a cause of action in the second action was identical to a cause of action in the first.
- Accordingly, the defendants were subject to both cause of action estoppel and issue estoppel arising from the opposition proceedings.
- ‘…The defendants were precluded from alleging use by them of the SPECIAL FX brand prior to the application for registration for the purpose of a defence under s 11(3) of the 1994 Act or a counterclaim for passing off, as that issue had been expressly raised in the opposition proceedings and had been concluded against the first defendant.’
- The defendants were precluded from re-litigating that issue on the grounds of issue estoppel.
Overturning of Landmark Trade Mark Ruling
The Court of Appeal has overturned this landmark ruling which, from last year until now, had transformed trade mark practice. This means that disputes already heard in proceedings before a hearing officer in the Trade Mark Registry (for example in an opposition proceedings) can be reheard in the High Court.
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once it had been registered.
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this trade mark invalid.
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought in relation to the same trade mark.
Comment: What this means is that an unsuccessful opponent to a trade mark opposition actio
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‘…(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.’
According to Section 47 of the Act:
‘…(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.’
The High Court held:
- There was no relevant difference between the practice and procedure of the Registry in opposition proceedings under s 38(2) of the Act and invalidity proceedings under s 47(1).
- The former took place before registration and the latter afterwards, but in each case the issues were whether any objection to registration could be made out under ss 3 and 5 of the Act.
- Therefore, the issues underlying the two sets of proceedings in the instant case were identical.
- It was established that cause of action estoppel applied where a cause of action in the second action was identical to a cause of action in the first.
- Accordingly, the defendants were subject to both cause of action estoppel and issue estoppel arising from the opposition proceedings.
- ‘…The defendants were precluded from alleging use by them of the SPECIAL FX brand prior to the application for registration for the purpose of a defence under s 11(3) of the 1994 Act or a counterclaim for passing off, as that issue had been expressly raised in the opposition proceedings and had been concluded against the first defendant.’
- The defendants were precluded from re-litigating that issue on the grounds of issue estoppel.
Overturning of Landmark Trade Mark Ruling
The Court of Appeal has overturned this landmark ruling which, from last year until now, had transformed trade mark practice. This means that disputes already heard in proceedings before a hearing officer in the Trade Mark Registry (for example in an opposition proceedings) can be reheard in the High Court.
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once it had been registered.
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this trade mark invalid.
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought in relation to the same trade mark.
Comment: What this means is that an unsuccessful opponent to a trade mark opposition actio
The very phrase “tax attorney” conjures up images of highly qualified legal professionals who spout terminologies you could never understand. Yes, tax laws are very complex and not easily followed by the general public. It does therefore pay to be armed with at least the basics before you file a tax related suit or hire the services of a tax attorney in Fort Worth. Fort Worth is home to a number of tax attorneys. Fort Worth has its own set of laws when it comes to taxes and its related aspects. It is therefore important, that your attorney is specialized not only in taxes, but also in laws related to Fort Worth in particular.Needless to say, without the help of a talented tax attorney, you may actually end up paying more or even end up facing criminal prosecution. A courtroom if seen from a different perspective is after all a kind of battlefield. Your
- Therefore, the issues underlying the two sets of proceedings in the instant case were identical.
- It was established that cause of action estoppel applied where a cause of action in the second action was identical to a cause of action in the first.
- Accordingly, the defendants were subject to both cause of action estoppel and issue estoppel arising from the opposition proceedings.
- ‘…The defendants were precluded from alleging use by them of the SPECIAL FX brand prior to the application for registration for the purpose of a defence under s 11(3) of the 1994 Act or a counterclaim for passing off, as that issue had been expressly raised in the opposition proceedings and had been concluded against the first defendant.’
- The defendants were precluded from re-litigating that issue on the grounds of issue estoppel.
Overturning of Landmark Trade Mark Ruling
The Court of Appeal has overturned this landmark ruling which, from last year until now, had transformed trade mark practice. This means that disputes already heard in proceedings before a hearing officer in the Trade Mark Registry (for example in an opposition proceedings) can be reheard in the High Court.
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once it had been registered.
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this trade mark invalid.
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought in relation to the same trade mark.
Comment: What this means is that an unsuccessful opponent to a trade mark opposition actio
"A desire can overcome all objections and obstacles." -- Anonymous Think about the above quote for a second. When you want, I mean REALLY want something, you can almost always rationalize getting it. You find a way to overcome that nagging little voice whose job it is to object and throw up obstacles.I want you to view objections as a good thing. Yes, seriously!If your prospects have objections, it means they are considering hiring you or purchasing your product. If they weren't interested, they wouldn't waste their time inquiring -- especially in today's world where they can be on your website one second and on someone else's the next.Chances are good that prospects are visiting your site because they have a problem. Chances are even better that they've had this problem for a while and may h
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once it had been registered.
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this trade mark invalid.
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought in relation to the same trade mark.
Comment: What this means is that an unsuccessful opponent to a trade mark opposition action could now attack the trade mark registration for invalidity (once the trade mark in question is registered) and that such an action cannot be prevented by principles of estoppel or abuse of process.
The decision in this case means that there is now room for a competitor to attack a trade mark application (during the opposition period) and again when the trade mark is registered on grounds of invalidity.
If you require further information contact us at enquiries@rtcoopers.com. Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/practice_intellectualproperty.php
© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.
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