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 an abuse of process for L’Oreal to raise by way of defence or counterclaim, for a declaration of invalidity or for relief on the basis of passing off, matters which it raised in the opposition proceedings and which were found against it. In so doing, it wished to take advantage of opportunities expressly afforded by the Act, and it did not seek to do so in a manner which amounted to an abuse of the process. Opposition proceedings were best not conducted on a basis which would prevent later challenges before a court.
Judges:
Chadwick, Lloyd, leveson LJJ
Citations:
[2007] EWCA Civ 1, Times 24-Jan-2007, [2007] ETMR 51, [2007] Bus LR 759, [2007] RPC 15
Links:
Jurisdiction:
England and Wales
Citing:
Cited – Procter and Gamble Co v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (‘Baby-Dry’) ECJ 20-Sep-2001
ECJ Appeal – Admissibility – Community trade mark – Regulation (EC) No 40/94 – Absolute ground for refusal to register – Distinctive character – Marks consisting exclusively of descriptive signs or indications – . .
Cited – Bessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
Cited – Thrasyvoulou v Secretary of State for the Environment HL 1990
A building owner appealed against enforcement notices which alleged that there had been a material change of use of his buildings in 1982. This notice was issued by a planning authority. As a result of the appeal an inspector determined that the . .
Appeal from – Special 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.
Cited – 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 . .
See Also – ‘Special Effects’: Application No 2237923 TMR 22-Aug-2002
cw Inter Partes Decisions – Trade Marks – Opposition . .
Cited – Buehler Ag v Chronos Richardson Ltd CA 20-Mar-1998
The rejection of an opposition claim to a European Patent by the European Patents Office, did not create an estoppel for an English Court looking at a similar issue. . .
Cited – Arnold v National Westminster Bank Plc HL 1991
Tenants invited the court to construe the terms of a rent review provision in the sub-underlease under which they held premises. The provision had been construed in a sense adverse to them in earlier proceedings before Walton J, but they had been . .
Cited – Re Deeley’s Patent 1895
A revocation of a patent for which the Attorney General’s fiat has been obtained is an action taken on behalf of the public at large. . .
Cited – Shoe Machinery Company v Cutlan 1896
The patentee had succeeded at trial in obtaining a declaration of validity and a determination of infringement, and, in subsequent proceedings, the infringer sought to challenge the validity of the patent by raising a fresh argument based on . .
Cited – Poulton v Adjustable Cover and Boiler Block Co CA 1908
The Plaintiff patent holder had obtained judgment, an injunction and damages against the Defendant for patent infringement despite a defence of invalidity based on prior art. The Defendant then acquired information about other instances of prior art . .
Cited – Thoday 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 . .
Cited – Coflexip S A and Another v Stolt Offshore Ms Ltd and others CA 27-Feb-2004
Proceedings had been brought by a third party in which the patent had been revoked. The Defendant in the first proceedings now sought release from an enquiry as to damages after being found, before the revocation, to have infringed the patent.
Cited – Johnson 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 . .
Cited – Shoe Machinery Company v Cutlan (No 2) 1896
Prior litigation had been an infringement action in which the Defendants denied both validity and infringement, and succeeded on infringement but failed on validity and were ordered to pay costs of the validity issue. By the time of the second . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Estoppel
Updated: 31 October 2022; Ref: scu.247684
