CHANCERY DIVISION
Strand, London, WC2A 2LL |
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B e f o r e :
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(1) William Evans (2) Susan Mary Evans (a partnership trading together as Firecraft) |
Claimants |
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Focal Point Fires Plc |
Defendant |
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Anna Carboni (instructed by Bird & Bird LLP) for the Defendant
Hearing date: 20th October 2009
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Crown Copyright ©
Peter Smith J :
INTRODUCTION
PRIMARY BASIS FOR THE CLAIMANTS' APPLICATION
BUSINESS BACKGROUNDS
INVALIDATION PROCEEDINGS
MATTERS FOR FUTHER CONSIDERATION
"(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented:
(a) by virtue of any rule of law (in particular the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or
(b) by virtue of an earlier right other than those referred to in sub-section (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs.
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an "earlier right" in relation to the trade mark."
THE ACTUAL DECISION
(1) The Claimants goods or services have acquired a goodwill or reputation in the market and known by some distinguishing feature.
(2) That there is a misrepresentation by the Defendant (whether or not intentional) leading or is likely to lead the public to believe that goods offered by the Defendant are goods of the Claimant.
(3) That the Claimants have suffered or are likely to suffer damage as a result of the erroneous belief engendered by the Defendant's misrepresentation.
CONSEQUENCES OF HEARING OFFICER'S DECISION
CAUSE OF 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 species, which I will call "cause of action estoppel," is that which prevents a party to an action from asserting or denying, as against the other party, the existence of a particular cause of action, the non-existence or existence of which has been determined by a court of competent jurisdiction in previous litigation between the same parties. If the cause of action was determined to exist, i.e., judgment was given upon it, it is said to be merged in the judgment, or, for those who prefer Latin, transit in rem judicatam. If it was determined not to exist, the unsuccessful plaintiff can no longer assert that it does; he is estopped per rem judicatam. This is simply an application of the rule of public policy expressed in the Latin maxim "Nemo debet bis vexari pro una et eadem causa." In this application of the maxim "causa" bears its literal Latin meaning."
ISSUE ESTOPPEL
"The second species, which I will call "issue estoppel," is an extension of the same rule of public policy. There are many causes of action which can only be established by proving that two or more different conditions are fulfilled. Such causes of action involve as many separate issues between the parties as there are conditions to be fulfilled by the plaintiff in order to establish his cause of action; and there may be cases where the fulfilment of an identical condition is a requirement common to two or more different causes of action. If in litigation upon one such cause of action any of such separate issues as to whether a particular condition has been fulfilled is determined by a court of competent jurisdiction, either upon evidence or upon admission by a party to the litigation, neither party can, in subsequent litigation between one another upon any cause of action which depends upon the fulfilment of the identical condition, assert that the condition was fulfilled if the court has in the first litigation determined that it was not, or deny that it was fulfilled if the court in the first litigation determined that it was."
ABUSE OF PROCESS
"But Henderson v Henderson abuse of process, as now understood, although separate and distinct from cause of action estoppel and issue estoppel, has much in common with them. The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. As one cannot comprehensively list all possible forms of abuse, so one cannot formulate any hard and fast rule to determine whether, on given facts, abuse is to be found or not. Thus while I would accept that lack of funds would not ordinarily excuse a failure to raise in earlier proceedings an issue which could and should have been raised then, I would not regard it as necessarily irrelevant, particularly if it appears that the lack of funds has been caused by the party against whom it is sought to claim. While the result may often be the same, it is in my view preferable to ask whether in all the circumstances a party's conduct is an abuse than to ask whether the conduct is an abuse and then, if it is, to ask whether the abuse is excused or justified by special circumstances. Properly applied, and whatever the legitimacy of its descent, the rule has in my view a valuable part to play in protecting the interests of justice."
SUMMARY JUDGMENT PRINCIPLES
AUTHORITIES
"opposition proceedings are inherently not final. They exist at the first stage of the process, before registration. By itself that would not be conclusive, but it seems to us that the fact that, at least, any unconnected third party could challenge the validity of the registration despite an unsuccessful opposition by another, and that, if that challenge were unsuccessful, there would be nothing which would bind the unsuccessful opponent (in contrast with the position of a party which has unsuccessfully applied at any rate to the Court; for a declaration of invalidity), shows that the decision of the Registry in opposition proceedings, or more generally a decision to register despite opposition, is not a final decision so as to be capable of being the basis for an issue estoppel. This is true both as regards the grounds of invalidity and as regards the issue of prior use more generally, as relevant to a passing off claim. The same wouldl be true of cause of action estoppel if, contrary to our views expressed above, there was a cause of action at that stage" (paragraph 71).
"We do not decide the position as regards the effect of an unsuccessful application for a declaration for invalidity to the Registry, which was the subject of the Hormel case. But proceedings in Court clearly do give rise to res judicata, in one form or another, and it seems likely that at the very least, an unsuccessful application for a declaration of invalidity in the Registry would preclude a later attempt to the same effect in the Registry, unless presented in reliance on new grounds not available on the first occasion."
"83 Counsel addressed to us various submissions based on the decision of Mr Arnold QC in Hormel, referred to above. That case was concerned with successive attempts by the same party to obtain a declaration of invalidity as to a trade mark under s.47, first from the Registry and then, based on different grounds, from the court. The Judge expressly distinguished a case involving prior opposition proceedings.
84 It seems to us that this is a crucial distinction. It does not seem to us to be necessary to decide whether Hormel was right. We can see more scope for arguing that it was, at least, an abuse of process to start two successive proceedings for a declaration of invalidity, one in the Registry and the other in the Court. But even if that decision was correct, it does not seem to us to follow that the same applies in the case of prior opposition proceedings. We are therefore not persuaded that the decision in Hormel, if right, requires that the appeal be dismissed, so that it is necessary to decide the correctness of that decision in order to allow this appeal."