Thomas v Luv One Luv All Promotions Ltd & Anor [2020] EWHC 1565 (IPEC) (17 June 2020)

Thomas v Luv One Luv All Promotions Ltd & Anor [2020] EWHC 1565 (IPEC) (17 June 2020)

The Defendants are estopped by issue estoppel from denying the findings of the UKIPO Hearing Officer in the invalidation proceedings, including that the group operated as a partnership at will and that the goodwill in the name was not transferred solely to the Second Defendant. The Defendants' defence to passing off is struck out except as consistent with this judgment. The Second Defendant's trade mark registration is to be cancelled as an instrument of fraud. The claim for passing off relating to 'dub plates' and the counterclaim for distribution of partnership assets remain to be determined at trial.

Citation
[2020] EWHC 1565 (IPEC)
Parties
Claimant: Ian Thomas; First Defendant: Luv One Luv All Promotions Limited; Second Defendant: Winston Thomas
Jurisdiction
England and Wales
Judgment Date
17 June 2020
Procedural Posture
Passing Off and Trade Mark Dispute / Judgment on Application to Strike Out Defence And/or for Summary Judgment
Outcome
Defence struck out in part; summary judgment granted in part; trade mark registration cancelled; some issues to proceed to trial.
Legal Topics
Passing Off, Trade Mark Invalidity, Res Judicata, Issue Estoppel, Abuse of Process, Partnership Law
Intellectual Property Civil Procedure Passing Off Trade Mark Invalidity Res Judicata Issue Estoppel Abuse of Process Partnership Law

Case Brief

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Parties

Ian Thomas

Claimant

Luv One Luv All Promotions Limited

First Defendant

Winston Thomas

Second Defendant

Procedural Posture

Passing Off and Trade Mark Dispute / Judgment on Application to Strike Out Defence And/or for Summary Judgment

Legal Issues

  1. 1 Whether the defence should be struck out on grounds of estoppel and abuse of process
  2. 2 Whether summary judgment should be granted on the defence to passing off and trade mark claims
  3. 3 Whether issue estoppel or cause of action estoppel arises from prior UKIPO proceedings

Ratio Decidendi

The Defendants are estopped by issue estoppel from denying the findings of the UKIPO Hearing Officer in the invalidation proceedings, including that the group operated as a partnership at will and that the goodwill in the name was not transferred solely to the Second Defendant. The Defendants' defence to passing off is struck out except as consistent with this judgment. The Second Defendant's trade mark registration is to be cancelled as an instrument of fraud. The claim for passing off relating to 'dub plates' and the counterclaim for distribution of partnership assets remain to be determined at trial.

Court Disposition

Defence struck out in part; summary judgment granted in part; trade mark registration cancelled; some issues to proceed to trial.

Orders

  • Second Defendant's Defence to passing off by use of the signs LUV INJECTION, LUV INJECTION SOUND, LOVE INJECTION and LOVE INJECTION SOUND is struck out, save as consistent with this judgment.
  • Summary judgment granted for cancellation of Second Defendant's trade mark registration no UK 00003212085 for LUV INJECTION SOUND.