No special dispensation for SPECIAL FX

On Friday a rare trade mark decision of Vice-Chancellor Morritt appeared on the BAILII website, Special Effects Ltd v L’Oreal SA and another [2006] EWHC 481 (Ch). The Vice Chancellor is not one of the IPKat's favourite IP judges on account of his annoying habit of talking of "breach of copyright" (the Act, and those who carefully study it, talk of "infringement", not "breach"). However, he seems to have got this one right.

Special Effects was the assignee of a word mark SPECIAL EFFECTS, which was registered for conditioners and hair lotions (Class 3) and beauty and cosmetic therapies (Class 40). L'Oreal - who used the brand name SPECIAL FX - had fought tooth and claw when opposing the application, raising pretty well every ground it could think of, but without success.

Once it got its mark registered, Special Effects sued L'Oreal and its UK subsidiary for infringement through the use of SPECIAL FX. Special Effects also argued that L'Oreal was barred from challenging the validity of the mark on grounds of estoppel and abuse of process. L'Oreal denied they were infringing, arguing that the registration of the mark was invalid.

Several issues fell to be determined at a preliminary hearing: (i) was L'Oreal precluded by cause of action estoppel, issue estoppel or abuse of process from challenging the validity of the mark? (ii) was L'Oreal barred by cause of action estoppel, issue estoppel or abuse of process from alleging use of its own marks before Special Effect's application date in a defence of an earlier local right under s.11(3) of the Trade Marks Act 1994 or in support of their own counterclaim for passing off?

Vice Chancellor Morritt held, in favour of Special Effects, that L'Oreal was barred to the hilt and could not re-contest any of the issues it wanted to raise. In particular he held that
* there was no real difference between the practice and procedure of the Trade Marks Registry in opposition proceedings and invalidity proceedings. The issues underlying the two sets of proceedings were identical.

* cause of action estoppel applied where a cause of action in the second action was identical to a cause of action in the first.

* L'Oreal could not rely on their own use of the SPECIAL FX brand before the date of application for SPECIAL EFFECTS, since that issue had been expressly raised, and dealt with, in the opposition proceedings.
The IPKat notes that the Vice-Chancellor's ruling is supported by the earlier ruling of Richard Arnold QC in the Spambusters case.

Prince Charles report

The full text of Mr Justice Blackburne's ruling on Friday in HRH Prince of Wales v Associated Newspapers Ltd [2006] EWHC 522 (Ch) is now available on BAILII.

Smelly trees make their mark

Meanwhile, Mr Justice Kitchin has not been idle. His Chancery Division ruling in Julius Samann Ltd and others v Tetrosyl Ltd [2006] EWHC 529 (Ch) was also posted on BAILII on Friday.

Samann were the proprietors and exclusive licensee of registered trade marks that consisted of a stylised fir or pine tree on a base. Those marks had been used continuously since the early 1950s in relation to cardboard air fresheners that retailed for prices in the region of 70 pence to £2. In 2003 Tetrosyl, who made a wide range of products for use in the car sector, started selling an air freshener in the shape of a fir tree, covered in snow and with flashing lights. Other suppliers had not used fir tree shapes in the UK as trade marks, except on rare occasions on which Samann took action to prevent such use.

Above: Here's a picture of the IPKat hiding behind an air-freshening Christmas tree

In this case Samann sued Tetrosyl for trade mark infringement and passing off. Tetrosyl denied infringement and maintained that its use of the Christmas tree was permitted, being the use of an indication concerning a quality of the product. Tetrosyl also argued that the registrations should be declared invalid on the grounds that the marks consisted exclusively of the shape which gave substantial value to the goods or consisted exclusively of indications served to designate the kind, quality or other characteristics of the goods and there had been insufficient use of the marks to render them distinctive. Also they said the tree marks had become common in the trade for the products in respect of which they were registered.

Kitchin J upheld Samann's claim in part, in that Tetrosyl's actions amounted to trade mark infringement but not passing off. In particular

* Tetrosyl had used, in the course of trade, a sign which, because of its similarity to the tree marks and because of the identity of goods covered by the marks and the sign, there existed a likelihood of confusion on the part of the public.

* Tetrosyl had not shown that the need to use the Christmas tree product was such that Samann's rights had to yield to it. There was no need for Tetrosyl to make an air freshener in the shape of a fir tree, even at Christmas.

* Since the sale of such an air freshener caused detriment to the distinctive character and repute of the tree marks, Samann could justifiably complain of that use, which gave the impression that there was a commercial connection between the two businesses and was, without due cause, detrimental to the distinctive character or the repute of the tree marks.

* There was no evidence of any actual confusion on the part of the public, nor of passing off.

* The tree marks were valid, since they had a substantial reputation.
The IPKat has often seen those annoying little fresh-air smell trees dangling from the rear view mirrors of motor cars and it never occurred to him that they might be trade marks. But perhaps that's because he's not a relevant consumer: when he wants fresh air, he opens the window.

Smelly trees here
Fir trees here and here
Fur trees here
Furze here

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