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"Now is the time for all good representatives to come to the aid of the party ..."

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Come to the Firecraft party -- but be sure to bring your professional representative. That's because there's a new Tribunal Practice Notice, fresh today from the United Kingdom's Intellectual Property Office. It's cutely named TPN 6/2009 Requirement to attend hearings in relation to applications for invalidation where there are grounds of invalidation under sections 5(1), 5(2), 5(3) and/or 5(4) of the trade marks act 1994 [why the initial lower case letters for what the Kat prefers to regard as the Trade Marks Act? Is this the beginning of a new trend towards informality?] -- but you can call it "TPN/2009" for short. According to the rubric,

"In William Evans and Susan Mary Evans (a partnership trading together as Firecraft) v Focal Point Fires Plc [2009] EWHC 2784 (Ch) [briefly noted here on the Class 46 weblog] Smith J, in granting summary judgment, stated:

"91. I would therefore conclude that there is nothing in those decisions which compels or leads me to conclude that my earlier analysis is incorrect. I am quite satisfied and so determine if necessary that the principles of cause of action, issue estoppel and abuse of process can apply to a second attempt to challenge the validity of a Trade Mark after invalidity proceedings. Although the Hormel case [noted here by the IPKat] dealt with an unsuccessful challenge to validity; the converse is equally true. It cannot be right to allow the Defendant to seek to re-run a successful adverse decision on validity against it."

The effect of this judgment is that an invalidation action before the registrar may give rise to res judicata and that re-litigation between the parties may be an abuse of process. In the above case a decision by a hearing officer that the registered proprietor?s trade mark should not have been registered, as use of it was liable to be prevented by the law of passing-off, gave rise to the granting of summary judgment in favour of the plaintiffs in relation to their claim of passing-off before the court. Smith J distinguishes between oppositions and applications for invalidation. (It was decided by the Court of Appeal in Special Effects Ltd v L?Oréal SA [2007] EWCA Civ 1 [on which see the IPKat here] that an opposition action before the registrar does not give rise to res judicata and that re-litigation between the parties after a decision in an opposition case would not be an abuse of process.)

Smith J's judgment has clear ramifications in relation to the effects of invalidation cases brought before the registry which include grounds under sections 5(1), 5(2), 5(3) and 5(4) of the Trade Marks Act 1994. Owing to the significant consequences that could arise in civil actions for infringement and/or passing-off subsequent to a decision of the registrar, it has been decided that invalidation actions that include grounds under sections 5(1), 5(2), 5(3) and 5(4) of the Trade Marks Act 1994 will be decided following a hearing. Rule 62(1)(c) of the Trade Marks Rules 2008 states:

"62.?(1) Except where the Act or these Rules otherwise provide, the registrar may give such directions as to the management of any proceedings as the registrar thinks fit, and in particular may?

(c) require a party or a party?s legal representative to attend a hearing;"

In relation to the aforementioned cases the parties or their legal representatives will be required to attend the hearing".

The IPKat thinks this is a good way to ensure that the party losing first time round will at least be saved the wasted expectation of success in later proceedings. Merpel disagrees: how many times since the 1994 Act came into force has re-litigation and estoppel been a problem, she mews. If it happens so rarely, why put parties to the extra expense and possible inconvenience in what should be swift, cheap and relatively simple proceedings for the sake of a might-be in the future? Tufty wonders whether there is an appeal in the offing in the Firecraft case. All the Kats in unison wonder how much consultation there was between the IPO and the trade mark professions and bodies representing trade mark owners in the UK before taking this decision.

Do-it-yourself estoppel on Wikipedia here (a great chance to rewrite the law -- and add your own footnotes!)
Déjà vu here, here, here and here
Second time lucky here

Full post as published by IPKat on December 22, 2009 (boomark / email).