May 20
The claimant and the second defendant were half-brothers who, along with others, were members of a musical group known as LOVE INJECTION or LUV INJECTION. Following the group’s split the claimant started to perform along with others under the name “Love Injection” and less frequently “Luv Injection”, and the second defendant started to perform under the name “Luv Injection Sound” together with some of the individuals who were involved in the group before the split, which did not include the claimant. The second defendant was also the sole shareholder and director of the first defendant company which promoted the group operated by the second defendant. In proceedings in the Intellectual Property Office the hearing officer upheld the claimant’s objections to the second defendant’s application for and registration of “LOVE INJECTION SOUND” and “LUV INJECTION SOUND” as trade marks, finding that both the application and registration were made in bad faith under section 3(6) of the Trade Marks Act 1994, and that the use of the marks could be restrained by the claimant by virtue of the law of passing off under section 5(4)(a) of the same Act (“the invalidity proceedings”). Articles 2 and 5 of the Trade Marks (Relative Grounds) Order 2007 curtailed the width of section 5(4) of the 1994 Act, restricting the raising of an objection under section 5(4), and an application for a declaration of invalidity on that ground, to the proprietor of the earlier trade mark or other earlier right. The second defendant continued to use the marks LOVE INJECTION and LUV INJECTION and consequently the claimant brought a claim in passing off. The second defendant asserted that he was the owner of the goodwill in the name, that he was entitled to continue to use it and that, on the contrary, it was the claimant who was passing off. On the claimant’s application to strike out the defence on the basis of estoppel and abuse of process, the judge held that both the claimant and the second defendant were estopped from denying the findings of the hearing officer in the invalidity proceedings, there being no special circumstances which would disapply that estoppel, and accordingly she struck out the defence.
On the defendants’ appeal—
Held, appeal allowed. Where a decision was made on two separate grounds, each one of which formed the basis for the decision, in the present case the objection under section 5(4)(a) of the Trade Marks Act 1994, from which the defendant had no right of appeal, and the objection under section 3(6) of the same Act, it was at least doubtful whether the decision created an issue estoppel. Even if a “twin ratio” decision could create an estoppel in relation to both rationes, an inability to appeal might be one of the special factors which persuaded a court to permit a challenge to at least one of the rationes. In the present case the lack of any opportunity for the second defendant to mount an effective appeal against the objection based on section 5(4)(a) of the 1994 Act, inter alia, amounted to such a special circumstance which entitled the second defendant to challenge the claimant’s standing to bring proceedings for passing off otherwise than for the benefit of the partnership (paras 51, 75–76, 79, 80).
Aaron Wood (instructed by Blaser Mills LLP, High Wycombe) for the claimant.
Michael Hicks (instructed by Higgs & Sons, Brierley Hill) for the defendants.