Hormel Foods Corporation v Antilles Landscape Investments NV: ChD 24 Jan 2005

The claimant had alread challenged the validity of the defendant’s registered trade mark, but sought to do so now on grounds which could have been advanced in the earlier case. The claimant owned the trade mark ‘SPAM’ for canned meats, and the defendant had the mark ‘SPAMBUSTER’ for computer programs.
Held: The claim was estopped. The law of estoppel as it applied to patents and registered design cases applied also to trade mark actions. If a party attacked the validity of a mark at trial, he had a duty to put his entire case. Whether he did so or not, if he failed, he would be estopped form trying again, even on different grounds. This kind of estoppel did not however bar a claim for revocation, because that concerned different events, namely those which had occurred after registration, and which could not have been advanced in a challenge to the validity of the mark.


Richard Arnold QC


[2005] ETMR 54, Times 28-Feb-2005, [2005] RPC 28, [2005] EWHC 13 (Ch)




Trade Marks Act 1994 47


England and Wales


CitedHenderson v Henderson 20-Jul-1843
Abuse of Process and Re-litigation
The court set down the principles to be applied in abuse of process cases, where a matter was raised again which should have been dealt with in earlier proceedings.
Sir James Wigram VC said: ‘In trying this question I believe I state the rule . .
CitedJohnson v Gore Wood and Co HL 14-Dec-2000
Shareholder May Sue for Additional Personal Losses
A company brought a claim of negligence against its solicitors, and, after that claim was settled, the company’s owner brought a separate claim in respect of the same subject-matter.
Held: It need not be an abuse of the court for a shareholder . .
CitedThoday v Thoday CA 1964
The court discussed the difference between issue estoppel, and action estoppel: ‘The particular type of estoppel relied upon by the husband is estoppel per rem judicatam. This is a generic term which in modern law includes two species. The first . .
CitedRead v Brown 1888
Lord Esher defined the phrase ’cause of action’ to mean ‘Every fact which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court.’ . .

Cited by:

CitedSpecial Effects Ltd v L’Oreal Sa and others ChD 17-Mar-2006
The defendant had previously opposed the registration of the claimant’s trade mark before the Comptroller General, but failed. The claimant now in infringement procedings sought the strike out of the defendant’s challenge to its validity.
CitedSpecial Effects Ltd v L’Oreal Sa and Another CA 12-Jan-2007
The defendants had opposed the grant of the trade mark which they were now accused of infringing. The claimants said that having failed at the opposition stage, they were now estopped from challenging the validity of the mark.
Held: It was not . .
Lists of cited by and citing cases may be incomplete.

Intellectual Property, Estoppel

Updated: 04 July 2022; Ref: scu.223317