Special Effects Ruling gives L'oreal a Head Start

In a crucial trade mark case before the Court of Appeal, L’Oreal have been granted clearance to use the same arguments in the High Court as they had unsuccessfully used in opposing an application to register trade marks by Special Effects Limited in the Trade Marks Registry.

The dispute began in the year 2000 when SPECIAL EFFECTS Limited applied to the Trade Marks Registry to register the mark SPECIAL EFFECTS. L’Oreal opposed the application. However, the Registry’s Hearing Officer rejected L’Oreal’s opposition and the contested mark was registered.

In 2005 Special Effects Limited issued proceedings to stop L’Oreal from infringing their registered trade mark. L’Oreal counterclaimed that the registration was invalid, repeating the claims made in their earlier – but unsuccessful – opposition. However, in March 2006 the High Court ruled that L’Oreal was estopped from making a counterclaim for invalidity because the grounds were identical to those used in the opposition proceedings.

Because of the implications for consumers, the Institute of Trade Mark Attorneys (ITMA) was so concerned at this turn of events that it made submissions to the Court of Appeal against the High Court’s ruling. ITMA President, Philip Harris explains:

“The real danger of the High Court ruling was that by allowing estoppel to arise in this case would have enormous implications for consumers, practitioners and the Registry itself because the result would have been increased complexity in proceedings, and increased costs.”

“The current opposition mechanism provides a relatively cheap and informal means of testing the validity of a prospective mark. The procedures are proportionate to that. If it had been held that an estoppel might arise, then the value of the system would have been open to question and users might have switched increasingly to using the Courts to resolve these issues.”

“We felt it was clear that, as in OHIM (the Office for the Harmonisation of the Internal Market), estoppels should not arise based upon decisions in opposition proceedings conducted within the Trade Marks Registry. We are please the Court of Appeal agrees.”

NOTES FOR EDITORS
1. The Institute of Trade Mark Attorneys (ITMA) was established in 1934 as the professional body representing those persons qualified to act for the owners of trade mark and allied intellectual property rights (in particular, registered designs) both nationally and internationally. It now represents the vast majority of UK registered trade mark agents and all UK Trade Mark & Design Litigators.

2. Currently ITMA has approximately 500 practising members; it also extends associate membership to professionals in related fields of law and overseas membership to foreign trade mark attorneys. Its total membership (all classes) is about 1600 members, primarily located in the United Kingdom and Europe, but also in more than 50 other countries.

3. ITMA is regularly consulted by UK government and by international bodies when questions affecting trade mark and allied intellectual property rights arise. It has regular meetings with the UK Patent Office, the Community Trade Marks Office (OHIM), the World Intellectual Property Organisation (WIPO) and other sister organisations in Europe and beyond. For more information visit www.itma.org.uk.

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