Once dealt with, always decided? The importance of res judicata and the UK IPO in trade mark disputes

Those dealing with registered trade mark matters will know the importance of properly pleading opposition cases at the UK IPO. A decision of the UK IPO in relation to the grant of registered trade mark rights may very well restrict the complainer in subsequent proceedings.

A case in point is Firecraft v Focal Point Fires, a decision of the English High Court, which concerned the grant of a declaration of infringement of a registered trade mark.

It stated that the remedy sought in court was one which the UK IPO hearing officer could have given (and did), and as such to rehear this in court would have been an abuse of process.

It was potentially restricted in its scope of effect, however. If additional remedies had been sought, which the hearing officer could not have given, then there may have been some scope for rehearing as any claim would have had to made out to the extent to justify those additional remedies.

The Court said: “the claimants accept that the question of relief beyond the declaration will be for further argument”;

and further explained:

“will [the] damages be assessed on the basis of damage to the claimants’ goodwill or will they be assessed on the basis of an account of profits made by the defendant? That is a well known alternative which the claimant in a passing off action sooner or later will have to elect for. Another possible question is whether or not damages could be awarded in lieu of or in addition to an injunction?”

Why Scottish law may provide an advantage in UK-wide infringement matters

However, the case never dealt with alternative remedies and as such it left an unhappy unease for those progressing infringement matters in the UK.

At least in Scotland, though, this unease has been dealt with to an extent.

In the case Dojo Design Limited v Dojo Design Studio Limited (unreported) the parties were concerned with the presence of passing off and remedies relating to that (if proven).

The matter of passing off had been dealt with, and extensive evidence led thereon, at UK IPO level in relation to the priority of rights in the context of a conjoined trade mark opposition and invalidity action, and the UK IPO hearing officer had decided upon the presence of passing off.

One of the parties (the defender) sought to reopen the debate around passing off within a related Sheriff Court action. The other party (the pursuer) objected to this, on the basis the presence of passing off was res judicata.

The Court found that a plea of res judicata was only available to the defender in an action, or possibly a pursuer in a counterclaim. Further, the Court found that the subject matter of the action (as dictated by the craves) was not the same as that addressed by the UK IPO. In addition, the Court found that whilst English decisions had been referred to by the pursuer, they were of no real assistance because of the different procedural system in England involving significant specialities.

Whilst a decision of a lower court, the approach taken is significant, potentially setting apart the Scottish Courts from their English counterparts, and establishing a basis why litigants may wish to choose Scotland over England in relation to UK-wide infringement matters, where prior UK IPO proceedings are involved.

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To discuss brand management matters, contact Jamie Watt at [email protected].

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