High Court ruling has major implications for brand owners and Trade Mark Attorneys

A recent High Court ruling could have major consequences for trade mark owners and for the trade mark attorney profession.

The ruling by Mr. Justice Peter Smith concerned a case brought by Bill Evans of Syston, Dorset, whose company manufactured, sold and installed bespoke stone fireplaces under the name FIRECRAFT since the 1990s. His action was against Focal Point Fires Plc who introduced gas and electric fires under that mark in the summer of 2000.

Focal Point had registered the FIRECRAFT mark in 2000. However, in 2007 Mr. Evans successfully challenged its registration at the Trade Marks Registry and the mark was invalidated on the basis of Mr. Evans’s earlier unregistered rights. Focal Point chose not to appeal the Registry’s decision.

In March 2009 Mr. Evans issued passing off proceedings against Focal Point in the High Court and argued that Focal Point was estopped from defending itself against that claim on the grounds that if they had wanted to submit further evidence they should have done so by appealing the Registry hearing back in 2007. Mr. Justice Smith upheld Mr. Evans’ claim on the grounds that once having had an opportunity to put their case, they (Focal Point) should not get a second bite at the cherry in the High Court.

Commenting on the outcome of the case, Gillian Deas, President of the Institute of Trade Mark Attorneys (ITMA) said:

“This decision has potential consequences for both trade mark (brand) owners and the profession of trade mark attorneys. In particular it is clear that certain proceedings may become more costly and complicated as the parties realize that they may be estopped from arguing their points again.”

“It may be that registered trade mark owners may choose to surrender their marks rather than defend themselves against the Trade Marks Registry; preferring instead to defend themselves in Court proceedings in a passing off action. Alternatively, on receipt of invalidity actions, trade mark owners may elect to apply to a Court for a declaration that their activities do not amount to passing off. Either way could lead to increased costs and more complex argument; not good for any party involved.”

“Both parties in this action were represented by experts in trade mark law. It goes without saying that members of ITMA are available to help and advise on trade mark disputes as well as on general matters of trade mark registration and protection. Registered Trade Mark Attorneys, who are all fully qualified and regulated, can be found on the home page of the ITMA website www.itma.org.uk.”

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 Intellectual Property Office (IPO), 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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