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UK IPO decisions as evidence before the High Court

UK IPO decisions as evidence before the High Court

03/12/09

The practical effect of Decisions of the UK Intellectual Property Office (UK IPO) can be further reaching than its effect on the Trade Marks Register, as illustrated recently by a decision of the High Court. In William Evans & Susan Mary Evans (trading as Firecraft) v Focal Point Fires Plc* it was held that an issue that had already been finally determined by a Hearing Officer of the UK IPO as a “relevant tribunal” should not be re-assessed by the Court. This could affect the ease with which an injunction to restrain unauthorised use of a mark can be obtained.

In this case, the Claimants applied for summary judgement in a claim brought against the Defendants for passing off resulting from the Defendant’s use of the word FIRECRAFT. The Defendants had a UK trade mark registration for FIRECRAFT but it was invalidated by the Claimants on the basis of their earlier goodwill. The Defendant did not appeal the decision of the UK IPO but carried on using the name FIRECRAFT.

In granting the invalidation, the UK IPO had to be satisfied that the Claimants had an actionable claim for passing off and that they would be entitled to an injunction if they were to apply to Court. The Hearing Officer cannot grant injunctions as his power is restricted to matters affecting the Register.

Before the High Court, the Claimants contended that primary liability had already been established before the UK IPO as it was the reason why the Defendant’s trade mark registration was declared invalid i.e. the Defendant’s use of the mark registered would amount to passing off. The Judge decided that it would be wrong for the Claimants to be required to prove before the Court that which had already been determined by a relevant tribunal on a final basis. He therefore concluded that the Defendant had no prospect of success in defending against liability for passing off and handed down judgment in favour of the Claimants.

Points to note

- The only relief requested by the Claimants was a declaration that the Defendant had passed off its goods or business as being that of the Claimants, rather than damages or an injunction. This was because of other issues that remained to be addressed.

- Extensive evidence was filed by both parties before the UK IPO during the invalidation proceedings, including the cross examination of witnesses.

- Although the Hearing Officer determined that the registration was invalid by reason of a cause of action as at 29th February 2000, it did not follow that the Claimants did not still have a cause of action before the High Court for passing off many years later, in 2009.

Conclusion

This decision has far-reaching implications that are potentially applicable not only to passing off but also infringement. For example if a mark is refused registration following opposition based on an earlier registered trade mark and the Applicant nevertheless puts the applied-for mark into use, the Opponent might be entitled to an injunction based only on the UK IPO decision. This should be borne in mind not only throughout inter partes proceedings before the UK IPO but also after their conclusion. Parties to proceedings before the UK IPO might be well-advised to appeal if a finding is against them as far as use of a mark is concerned.

 * [2009] EWHC 2784 (Ch), Peter Smith J