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Actual - Landmark Ruling in Trade Mark Case - Test for Invalidity
In Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal overturned the decision of the Chancery Division of the High Court. The case concerned an opposition to a trade mark registration. The Court in the first instance held that there was no relevant difference between
According to USFDA, a combination product is one composed of any combination of a drug and device; biological product and device; drug and biological product
the practice and procedure of the Trade Mark Registry in opposition proceedings under s 38(2) of the Trade Marks Act 1994 and invalidity proceedings under s 47(1) of the Act. The issues in dispute in the two sets of proceedings were identical.
First Instance Decision
The claimant company, Special Effects Limited, owned the mark SPECIAL
First Instance Decision
The claimant company, Special Effects Limited, owned the mark SPECIAL
; or drug, device, and biological product and fixed dose combination would include two or more combinations of drug.
Examples of combination products may in
Examples of combination products may in
EFFECTS which was obtained by way of an assignment. The trade mark was registered pursuant to s 40(1) of the Trade Marks Act 1994 (‘the Act’) in respect of goods in class 3 (conditioners and hair lotions, and services) and class 44 (beauty and cosmetic therapies).
Before the trade mark was registered, the first defendant opposed the trad
Before the trade mark was registered, the first defendant opposed the trad
lude drug-coated devices, drugs packaged with delivery devices in medical kits, and drugs and devices packaged separately but intended to be used together.
e mark application on the grounds set out in ss 3(1)(a), 3(3)(b), 5(2)(b) and 5(4)(a) of the Act. The opposition was dismissed by the hearing officer.
The claimant then commenced infringement proceedings against the first defendant and its UK subsidiary (the second defendant), alleging that they had infringed the trade mark SPECIAL EFFEC
The claimant then commenced infringement proceedings against the first defendant and its UK subsidiary (the second defendant), alleging that they had infringed the trade mark SPECIAL EFFEC
here is enormous increase in the number of combination products entering the market in the recent years. Combination products have proven advantages but fixe
S by using its brand SPECIAL FX and that the defendants were precluded from challenging the validity of the trade mark SPECIAL EFFECTS on grounds of:-
- Estoppel;
- Issue estoppel; and
- Abuse of process.
The defendants opposed these infringement proceedings on the basis that the registration of the
- Estoppel;
- Issue estoppel; and
- Abuse of process.
The defendants opposed these infringement proceedings on the basis that the registration of the
d dose combinations are still in the process of convincing regulatory authority on their advantages over the single ingredient formulations.
Combination pro
Combination pro
trade mark SPECIAL EFFECTS was invalid.
The Court in the first instance had to establish the following:-
- whether either or both of the defendants was/were precluded by cause of action estoppel, issue estoppel or abuse of process from challenging the validity of the trade mark SPECIAL EFFECTS; and
- whether ei
The Court in the first instance had to establish the following:-
- whether either or both of the defendants was/were precluded by cause of action estoppel, issue estoppel or abuse of process from challenging the validity of the trade mark SPECIAL EFFECTS; and
- whether ei
ucts have become life saving products for the pharmaceutical companies who doesn’t have many innovative molecules in their product pipeline and have been inc
her or both of the defendants was/were precluded by cause of action estoppel, issue estoppel or abuse of process from alleging use of the marks complained of before the application for registration as part of the basis for a defence under s 11(3) of the Act or as part of the basis for a counterclaim for passing off.
According to Section
According to Section
easingly used in the product life cycle management. Even the companies having product patents are trying to extend their product life cycle through the combi
38 of the Act:
‘…(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.’
According to Section 47 of the Act:
‘…(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in brea
‘…(2) Any person may, within the prescribed time from the date of the publication of the application, give notice to the registrar of opposition to the registration.’
According to Section 47 of the Act:
‘…(1) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in brea
nation products and maximize the revenues. But the companies involved in this practice are overlooking that they are burdening the patients both economically
h of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration). Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a d
and physically. They need to rightly judge the benefits of the combination products and they have to even look at the risks involved when combining the produ
istinctive character in relation to the goods or services for which it is registered.’
The High Court held:
- There was no relevant difference between the practice and procedure of the Registry in opposition proceedings under s 38(2) of the Act and invalidity proceedings under s 47(1).
- The former took place before r
The High Court held:
- There was no relevant difference between the practice and procedure of the Registry in opposition proceedings under s 38(2) of the Act and invalidity proceedings under s 47(1).
- The former took place before r
ts. Some of the combination products were well accepted by physicians while others suffered. Companies involved in development of combination products are fi
gistration and the latter afterwards, but in each case the issues were whether any objection to registration could be made out under ss 3 and 5 of the Act.
- Therefore, the issues underlying the two sets of proceedings in the instant case were identical.
- It was established that cause of action estoppel applied where a caus
- Therefore, the issues underlying the two sets of proceedings in the instant case were identical.
- It was established that cause of action estoppel applied where a caus
ding difficulty in defining their combination products and facing various challenges from selecting a combination to marketing it.
Following aspects would a
Following aspects would a
of action in the second action was identical to a cause of action in the first.
- Accordingly, the defendants were subject to both cause of action estoppel and issue estoppel arising from the opposition proceedings.
- ‘…The defendants were precluded from alleging use by them of the SPECIAL FX brand prior to the applic
- Accordingly, the defendants were subject to both cause of action estoppel and issue estoppel arising from the opposition proceedings.
- ‘…The defendants were precluded from alleging use by them of the SPECIAL FX brand prior to the applic
dd to the challenges in developing combination products:
Which markets to tap where the combination products can do fairly well?
Which combination prod
Which markets to tap where the combination products can do fairly well?
Which combination prod
ation for registration for the purpose of a defence under s 11(3) of the 1994 Act or a counterclaim for passing off, as that issue had been expressly raised in the opposition proceedings and had been concluded against the first defendant.’
- The defendants were precluded from re-litigating that issue on the grounds of issue e
- The defendants were precluded from re-litigating that issue on the grounds of issue e
cts are meaningful and rational?
Which therapeutic categories to select?
Which Combinations can address unmet needs of the patients?
Do combin
Which therapeutic categories to select?
Which Combinations can address unmet needs of the patients?
Do combin
toppel.
Overturning of Landmark Trade Mark Ruling
The Court of Appeal has overturned this landmark ruling which, from last year until now, had transformed trade mark practice. This means that disputes already heard in proceedings before a hearing officer in the Trade Mark Registry (for example in an opposition proceedings) can be rehear
Overturning of Landmark Trade Mark Ruling
The Court of Appeal has overturned this landmark ruling which, from last year until now, had transformed trade mark practice. This means that disputes already heard in proceedings before a hearing officer in the Trade Mark Registry (for example in an opposition proceedings) can be rehear
tions increase the patient compliance?
What would be the developing cost?
How to tackle the risks encountered during combination product developmen
What would be the developing cost?
How to tackle the risks encountered during combination product developmen
d in the High Court.
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once i
In the initial dispute between L’Oreal and Special Effects, the High Court did not allow L’Oreal to invalidate Special Effects’ SPECIAL FX trade mark registration because L’Oreal had already failed in an opposition against registering the same trade mark and was therefore estopped from attacking the mark again once i
t?
As combination products don't fit into the traditional categories of drugs, medical devices, or biological products, the USFDA is in the process of devel
As combination products don't fit into the traditional categories of drugs, medical devices, or biological products, the USFDA is in the process of devel
had been registered.
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this tr
However, in Special Effects Limited v L’Oreal & International Trademark Association (Intervener) [2007] EWCA Civ 1, the Court of Appeal held that neither cause of action nor issue estoppel would prevent L’Oreal from bringing invalidity proceedings against the Special Effects trade mark registration to render this tr
ping new procedures for reviewing their safety, efficacy and quality.
Professional from academic institutions, pharmaceutical industries, health care indust
Professional from academic institutions, pharmaceutical industries, health care indust
ade mark invalid.
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought
The Court of Appeal held that there was no cause of action involved in opposition proceedings which could estop a trade mark owner from bringing invalidity proceedings for the same trade mark registration. Also, the co-existence of provisions in the Act now enabled both opposition and invalidation actions to be brought
y and representatives from various regulatory agencies are working out to design the regulatory requirements for manufacture and sale of combination products
n relation to the same trade mark.
Comment: What this means is that an unsuccessful opponent to a trade mark opposition action could now attack the trade mark registration for invalidity (once the trade mark in question is registered) and that such an action cannot be prevented by principles of estoppel or abuse of process.
The decision
Comment: What this means is that an unsuccessful opponent to a trade mark opposition action could now attack the trade mark registration for invalidity (once the trade mark in question is registered) and that such an action cannot be prevented by principles of estoppel or abuse of process.
The decision
.
As there is an increasing trend of the combination products companies manufacturing such products should be able to tackle the problems involved in the de
As there is an increasing trend of the combination products companies manufacturing such products should be able to tackle the problems involved in the de
in this case means that there is now room for a competitor to attack a trade mark application (during the opposition period) and again when the trade mark is registered on grounds of invalidity.
If you require further information contact us at enquiries@rtcoopers.com. Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/pract
If you require further information contact us at enquiries@rtcoopers.com. Visit http://www.rtcoopersiplaw.com or http://www.rtcoopers.com/pract
elopment. They need to be wiser in analyzing the market trends and the regulatory requirements.
Companies that provide selfless information through particip
Companies that provide selfless information through particip
ce_intellectualproperty.php
© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances
© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances
tion in industry events and feedback to regulatory authorities would be able to face the challenges and will be successful in developing combination products
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