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Tribunal Practice Notice (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

This TPN has been updated. Please see TPN (3/2011)

In William Evans and Susan Mary Evans (a partnership trading together as Firecraft) v Focal Point Fires Plc [2009] EWHC 2784 (Ch) 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 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 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.