Special Effects Ltd v L'Oréal SA L'Oréal (UK) Ltd

Special Effects Ltd v L'Oréal SA L'Oréal (UK) Ltd

Both Defendants are precluded by cause of action estoppel and issue estoppel from challenging the validity of the Claimant’s registered trade mark on grounds raised or which could have been raised in prior opposition proceedings, including allegations of prior use before 30th June 2000. Second Defendant is a privy of First Defendant for estoppel purposes. Revocation claim under s.46(1)(a) TMA is premature and should be struck out. Article 6 ECHR does not bar estoppel in these circumstances.

Parties
Claimant: Special Effects Ltd; First Defendant: L'Oréal SA; Second Defendant: L'Oréal (UK) Ltd; Second Part 20 Defendants: Special Effects (A Firm) (Jenifer Ann Jones and David Charles Jones)
Jurisdiction
England and Wales
Judgment Date
17 March 2006
Procedural Posture
Trade Mark Infringement and Validity Proceedings / Judgment on Preliminary Issues
Outcome
Defendants precluded from challenging validity of Claimant’s mark on estoppel grounds; paragraph 14 of Defence and Counterclaim struck out; Article 6 ECHR defence struck out; revocation claim under s.46(1)(a) TMA struck out as premature.
Legal Topics
Trade Marks, Estoppel, Abuse of Process, Passing Off, European Convention on Human Rights
Intellectual Property Civil Procedure Trade Marks Estoppel Abuse of Process Passing Off European Convention on Human Rights

Case Brief

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Parties

Special Effects Ltd

Claimant

L'Oréal SA

First Defendant

L'Oréal (UK) Ltd

Second Defendant

Special Effects (A Firm) (Jenifer Ann Jones and David Charles Jones)

Second Part 20 Defendants

Procedural Posture

Trade Mark Infringement and Validity Proceedings / Judgment on Preliminary Issues

Legal Issues

  1. 1 Whether Defendants are precluded by cause of action estoppel, issue estoppel, or abuse of process from challenging the validity of the Claimant’s registered trade mark
  2. 2 Whether Defendants are precluded from alleging prior use of marks for defence under section 11(3) TMA or counterclaim for passing off
  3. 3 Whether UK or England and Wales is a 'particular locality' under section 11(3) TMA

Ratio Decidendi

Both Defendants are precluded by cause of action estoppel and issue estoppel from challenging the validity of the Claimant’s registered trade mark on grounds raised or which could have been raised in prior opposition proceedings, including allegations of prior use before 30th June 2000. Second Defendant is a privy of First Defendant for estoppel purposes. Revocation claim under s.46(1)(a) TMA is premature and should be struck out. Article 6 ECHR does not bar estoppel in these circumstances.

Court Disposition

Defendants precluded from challenging validity of Claimant’s mark on estoppel grounds; paragraph 14 of Defence and Counterclaim struck out; Article 6 ECHR defence struck out; revocation claim under s.46(1)(a) TMA struck out as premature.

Orders

  • Both Defendants precluded by cause of action estoppel and issue estoppel from relying on allegations in paragraphs 27(1)-(3), 27(5), and 27(6)(a)-(h) of Defence and Counterclaim.
  • Both Defendants precluded by issue estoppel from asserting use of SPECIAL FX before 30th June 2000 for defence under s.11(3) or counterclaim for passing off.