Trade Marks - Court of Appeal

No estoppel from opposition procedures

On 12 January 2007, the Court of Appeal in the United Kingdom handed down its decision in a Trade Mark case known as “Special Effects”.

The Court of Appeal was hearing an appeal from a decision of the High Court in the United Kingdom, which decided that arguments raised unsuccessfully during an opposition to a Trade Mark application at the Trade Mark Registry, could not be raised again to try to remove the same Trade Mark after registration. The High Court felt that the case should be governed by the principles of “estoppel”, which is a legal doctrine that can be used to prevent parties from re-opening an issue that has already been legally decided.

This had serious implications for the conduct and inherent usefulness of the Trade Mark opposition process in the UK.

It has come as a relief to Trade Mark owners that the Court of Appeal has overturned that decision, and has held that an opposition decision from the Trade Mark Registry is not a final decision and that as a result, further challenges on the same grounds must be possible.

The decision means that Trade Mark owners can continue to use the Opposition procedure as a quick and inexpensive method of testing the strength of a Trade Mark claim, without fear that this would prejudice their position at a later time.

For further information please contact Alan Venner or Edmund Harrison