Hormel Foods Corporation v Antilles Landscape Investments NV

In these proceedings the Claimant claims a declaration that the Defendant’s United Kingdom Registered Trade Mark No. 2,152,840 (“the Defendant’s Mark”) is and always has been invalidly registered, alternatively an order that the Defendant’s Mark be revoked with effect from 6 December 1997 or such later date as the Court may think fit, The Defendant counterclaims for a declaration that the Claimant’s United Kingdom Registered Trade Mark No. 602,660 (“the Claimant’s Mark”) is and always has been invalidly registered, alternatively an order that the Claimant’s Mark be revoked with effect from 30 November 2004 or such earlier date as the Court may think fit.

The Claimant is an American corporation. It is the manufacturer of canned luncheon meat sold under the trade mark SPAM. SPAM is an invented word which is a contraction of SPICED HAM. The Defendant is a holding company registered in the Netherlands Antilles with various subsidiary companies. Formerly one of its subsidiaries was Cablenet Ltd, a company registered in England, which carried on business as an Internet service provider (“ISP”) from 1995. Cablenet changed its name to Themail Ltd in 1999, was sold to another group in late 2002 and is now in compulsory liquidation. The casus belli is the Defendant’s registration of a trade mark consisting of a stylised presentation of the word SPAMBUSTER which was formerly used by Cablenet in relation to a program and service for combating unsolicited commercial electronic messages.

The proceedings have an unfortunate procedural history which was considered in a ruling which I gave during the course of the trial on 30 November 2004 (as subsequently corrected). It is unnecessary to say any more about that aspect of the matter, however, save to note that, except for one hearing at an early stage of the proceedings, the Defendant has been represented throughout by Mr Nicholas Austin. Mr Austin is the ultimate beneficial owner of the majority of the shares in the Defendant, although he is neither an officer nor an employee of the company.

The Claimant’s Mark consists of the word SPAM registered as of 25 November 1938 in respect of “canned meats” in Class 29. The Defendant’s Mark consists of the word SPAMBUSTER in the following stylised form registered as of 5 December 1997 in respect of “computer programming” in Class 42:

While the registered representation of the Defendant’s Mark is monochrome as shown, the colours yellow andredare~ciaimed as an element of the Mark. Although the details of this claim do not appear to be recorded on the Register, the Form TM3 filed by the Defendant when applying to register the Defendant’s Mark specifies that the interior of the letters is yellow while the external key line is red. A coloured version of the Defendant’s Mark as used by Cablenet is in evidence.

The Claimant contends that the Defendant’s Mark was registered in contravention of section 3(1)(b) alternatively (c) alternatively (d) of the Trade Marks Act 1994 and therefore should be declared invalid pursuant to section 47(1) of the 1994 Act. Originally the Claimant also contended that the Defendant’s Mark was registered in contravention of section 3(6) of the 1994 Act, but this allegation was withdrawn during the Claimant’s closing speech. Accordingly I need say no more about it. In the alternative the Claimant contends that the Defendant’s Mark should be revoked pursuant to section 46(l)(c) of the 1994 Act. In essence, the Claimant says that the Defendant’s Mark was descriptive or generic or otherwise devoid of distinctive character as at the application date or has subsequently become generic due to the Defendant’s inaction.

The Defendant contends that the Claimant’s Mark was registered in contravention of section 3(l)(d) of the 1994 Act and therefore should be declared invalid pursuant to section 47(1) of the 1994 Act. It is common ground that the Defendant is entitled to attack the validity of the registration on this ground even though the Claimant’s Mark was applied for as long ago as 1938 because of the transitional provisions under the 1994 Act. In the alternative the Defendant contends that the Claimant’s Mark should be revoked pursuant to section 46(l)(c) of the 1994 Act. To a large extent the Defendant’s contentions are a mirror image of the Claimant’s.

Sections 3, 46 and 47 of the 1994 Act provide in relevant part as follows:

“3.(1) The following shall not be registered-

. . .

(b)

trade marks which are devoid of any distinctive character,

(c)

trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

(d)

trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

46.(1) The registration of a trade mark may be revoked on any of the following grounds-

(c)

that in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;...

(5)

Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.

(6)

Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from-

(a)

the date of the application for revocation, or

(b)

if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.

47.(l) The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach 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 distinctive character in relation to the goods or services for which it is registered.

(5)

Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.”

These provisions implement Articles 3(1)(b),(c),(d),(3) and 12(2)(a) of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (“the Directive”) and correspond to Articles 7(1)(b),(c),(d), 50(1)(b) and 51(l)(a),(2) of Council Regulation 40/94/EEC of 20 December 1993 on the Community trade mark (“the Regulation”).

One of the Defendant’s defences to the Claimant’s claims arises out of the fact that this is not the first occasion on which the Claimant has brought proceedings against the Defendant. There have been two earlier sets of the proceedings.

On 22 March 2001 the Claimant filed an application to the Registrar of Trade Marks for a declaration that the registration of the Defendant’s Mark be declared invalid. In the statement of case which accompanied its Form TM26(I) the Claimant pleaded that it was the proprietor of various registered trade marks, including the Claimant’s Mark, and that the trade mark SPAM was a well-known mark within the meaning of Article 6bis of the Paris Convention. The Claimant continued:

“7.

The applicant’s mark, SPAM, is entirely contained within, and in fact the primary element of, the mark for which a declaration of invalidity is sought. The marks are therefore partially identical, and similar as a whole. The message conveyed by the mark SPAMBUSTER, is that the public should not buy or use the applicant’s products sold under the mark and/or that it is some exhortation to do away with or destroy the applicants’ mark SPAM, or their products, altogether.

8.

The services listed in the specification of the impugned UK registration are dissimilar to those for which the applicant for invalidity’s marks are registered, nevertheless, use and registration of the impugned mark is detrimental to the repute or the distinctiveness of the applicant’s earlier trade mark SPAM. Registration should therefore be declared invalid by virtue of Section 47(2)(a) of the Act (as this refers to Section 5(3) of the Act).

9.

The applicants are aware of use of the word ‘spam’ on the Internet, to denote ‘rubbish’ or ‘junk’. That particular usage is not trade mark use, and neither the applicant nor anyone else can prevent it. However, the use and registration of SPAMBUSTER as a trade mark can be prevented, and that is the purpose of this application for a declaration of the invalidity.”

On 17 April 2001 Mr Austin on behalf of the Defendant filed a Form TM8 and counter-statement in defence of this application. In its counter-statement the Defendant pleaded inter alia:

“2.

The word SPAM has more than one meaning in the English Language. The first relates to electronic junk mail and the second almost obsolete use of the word in relation to a reprocessed food made from waste products. A copy of the online American Heritage Dictionary of the English Language (Third Edition) copyright 1992 of the definition of SPAM and BUSTER is enclosed. This copy was obtained in June 1999 demonstrating that this is not a new definition but has been in existence for some time. The applications have no rights whatsoever in the use of a trade Mark which includes English Language common names for the use of electronic mail.

3.

The mark to which the applicants are complaining has been in global use since 1997 and they have not registered any objection to date. It is unreasonable and a malicious act designed to cause maximum damage to the Mark holders incurring the rightful owners to incur unnecessary costs. If the applicants own the trade mark SPAM in the defined class they also know according to their own statement para. 9 that they do not own rights in the name SPAM as applied to computer use and the action should be rejected as a malicious act designed to cause maximum damage to an established business providing services connected with electronic malicious mail.

4.

A Copy of the Spambuster web site is enclosed – there is no human possibility that this web site or the use of this name can be confused with food in a different class.”

The Defendant went on in paragraphs 8, 9 and 10 of the counter-statement to refer to the results of searches of the Internet conducted using the search engines Lycos, Excite and Google.

Enclosed with the counter-statement were copies of a number of documents. Amongst these were: (a) a print-out from a website called “internet.com” about SPAM (Footnote: ¹) defining it as “electronic junk mail or junk newsgroup postings”, explaining that it is a problem, giving two possible derivations of the term and providing various links, including one to “anti-spam links and resources”; (b) a print-out from on the online edition of the American Heritage Dictionary of the English Language (3^rd. ed., 1992) giving four definitions of the word BUSTER the first of which is “one that breaks up something: a crime buster”; (c) a number of print-outs from an electronic database of news media; and (d) print-outs from the Lycos, Excite and Google searches.

The print-outs from the electronic database consist of extracts from 10 publications dated between 1 August 1998 and 26 April 1999. Most of the publications appear to be American, including the Pittsburgh Post-Gazette and The New York Times. One is British, namely The Mail on Sunday. The extracts show the word SPAMBUSTER (including alternative spellings such as SPAM BUSTER and SPAM-BUSTER or cognate expressions such as SPAMBUSTING) being used in the following senses:

I have not seen this evidence, but I note that in a passage which was quoted in the subsequent decision Mr Sheppard said:

“In my opinion, the natural meaning of the word SPAMBUSTER is that a service sold under that trade mark would serve to protect the consumer from SPAM or destroy SPAM. The suggestion that anyone would want to protected from or kept away from SPAM or that it should be destroyed is of course detrimental to the trade mark SPAM.”

I understand Mr Shepperd to have been using the term SPAM in its trade mark sense, that is, as denoting the Claimant’s luncheon meat. Nevertheless, the first sentence I have quoted would, as I shall discuss in more detail below, be equally applicable if the term SPAM were being used in a non-trade mark sense, that is, as denoting unsolicited commercial electronic messages and in particular unsolicited commercial email (“UCE”).

The Defendant did not file any evidence. The parties agreed to the matter being determined without recourse to a hearing.

In a written decision dated 4 February 2002 (BL O/048/02), Mr M. Reynolds acting for the Registrar dismissed the application and ordered the Claimant to pay the Defendant the sum of £1,000 as a contribution to its costs. In his decision Mr Reynolds stated at pages 7-8:

“In the context of computer programming it seems probable that customers would regard the mark as alluding to a possible characteristic of the services that is computer programming services to filter or eliminate unsolicited e-mail communications. Strictly the specification is, I accept, not so limited and use on a broader category of computer programming services must be borne in mind.”

The Claimant did not appeal against this decision.

On or shortly before 11 April 2001 Mr Austin telephoned the newsdesk of The Mirror to draw its attention to the fact that, as he saw it, a large American corporation was acting oppressively, unreasonably and maliciously in seeking to have the Defendant’s Mark declared invalid. Mr Austin spoke to a journalist who asked Mr Austin to send him copies of the relevant documents. Accordingly, on 11 April 2001 Mr Austin faxed copies of the Claimant’s statement of case and of the Defendant’s counter-statement to the newsdesk under cover of a letter stating that he would welcome the issue “becoming public debate” as it was “effectively a matter of national interest”.

This led to The Mirror publishing a short article on 16 April 2001 headed “Two can play at that name”. The article began with the words “This is the most ridiculous trademark battle to date”. Towards the end, the article quoted the first two sentences of paragraph 2 of the Defendant’s counter-statement (set out in paragraph 12 above).

On 5 April 2002 (shortly before the expiry of the limitation period for defamation) the Claimant commenced proceedings against Mr Austin and the Defendant seeking damages for defamation and/or malicious falsehood in respect of the Mirror article and an injunction to restrain Mr Austin and the Defendant from further publishing or causing or authorising the publication of the words complained of. The focus of the complaint was the publication by The Mirror of the statement from the Defendant’s counter-statement that the “second, almost obsolete, use” of the word SPAM “relates to a reprocessed food made from waste products”.

After Mr Austin and the Defendant had served a Defence, the proceedings were settled upon the terms of a Tomlin order dated 2 August 2002 by the schedule of which Mr Austin accepted that the food product SPAM was not a reprocessed food made from waste products and undertook not to repeat that or similar allegations in the future.

Mr Austin complains that these proceedings are oppressive and vexatious, and that the Claimant is seeking to ignore the adverse ruling made against it in the Registry proceedings. It seems to me that this complaint may be analysed as a plea of either (i) cause of estoppel or (ii) abuse of process on the principle originating from Henderson V Henderson (1843) 3 Hare 100.

Either way, I consider that the defamation claim is irrelevant. While I can understand that it has increased Mr Austin’s sense of grievance, in my judgment the issues raised in that claim are clearly quite different from those raised in the present proceedings. I shall therefore say no more about it.

Cause of action estoppel was defined and distinguished from issue estoppel by Diplock LJ in Thoday v Thoday [1964] P 181 at 197-198 as follows:

“The particular type of estoppel relied upon…is estoppel per rem judicatam. This is a generic term which in modern law includes two species. The first species, which I will call ‘cause of action estoppel’ is that which prevents a party from asserting or denying, as against the other party, the existence of a particular cause of action, the non-existence or existence of which has been determined by a court of competent jurisdiction in previous litigation between the same parties. If the cause of action was determined to exist, i.e. judgment was given upon it, it is said to be merged in the judgment, or, for those who prefer Latin, transit in rem judicatam. If it was determined not to exist, the unsuccessful plaintiff can no longer assert that it does; he is estopped per rem judicatam. This simply an application of the rule of public policy expressed in the Latin maxim ‘nemo debet bis vexari pro una et eadem causa’. In this application of the maxim ‘causa’ bears its literal Latin meaning. The second species, which I will call ‘issue estoppel’ is an extension of the same rule of public policy. There are many causes of action which can only be established by proving that two or more different conditions are fulfilled. Such causes of action involve as many separate issues as there are conditions to be fulfilled by the plaintiff in order to establish his cause of action; and there are many cases where the fulfilment of an identical condition is a requirement to two or more different causes of action. If in litigation upon such cause of action any of such separate issues as to whether a particular condition has been fulfilled is determined by a court of competent jurisdiction, either upon evidence or upon admission by a party to the litigation, neither party can, in subsequent litigation between one another upon any cause of action which depends upon fulfilment of the identical condition, assert that the condition was fulfilled if the court has in the first litigation determined that it was not, or deny that it was fulfilled if the court in the first litigation determined that it was.”

Counsel for the Claimant referred me to Blackburn Chemicals Ltd v Bim Kemi AB [2004] EWCA Civ 1490 and in particular to the judgment of Longmore LJ at [22] which sets out the passage from Thoday v Thoday I have just quoted. He did not suggest, however, that any of the other parts of the judgments in Blackburn v Bim Kemi were of assistance with regard to the present question.

Counsel for the Claimant accepted that a decision of the Registrar was capable of founding a plea of res judicata since it was a decision of a court of competent jurisdiction. In my judgment he was right to do so: see Spencer Bower, Turner & Handley, The Doctrine of Res Judicata (3^rd ed.) at paragraphs 21-25. It may be noted that section 72(5) of the Patents Act 1977 provides that a decision of the Comptroller-General of Patents does not estop any party to civil proceedings in which infringement of a patent is alleged from alleging invalidity of the patent, whether or not any of the issues involved were decided in the decision. This provision would be unnecessary if such a decision was not capable of giving rise to a plea of res judicata. There is no equivalent provision in the 1994 Act.

Counsel for the Claimant submitted, however, that the causes of action invoked by the Claimant in the present proceedings were different from the cause of action relied upon in the first trade mark claim. He submitted that the causes of action in the present proceedings were claims that the Defendant’s Mark was invalidly registered on absolute grounds because it was descriptive or generic or otherwise devoid of distinctive character as at 5 December 1997, alternatively that it had become generic due to the Defendant’s inaction subsequently, whereas the cause of action in the earlier proceedings was a claim that the Defendant’s Mark was invalidly registered on relative grounds because it conflicted with the Claimant’s Mark in the manner proscribed by section 5(3) of the 1994 Act.

Whether this submission is correct depends on the ambit of a cause of action for the purposes of cause estoppel. The classic definition of “cause of action” is that given by Lord Esher MR in Read v Brown (1888) 22 QBD 128 at page 131 and Coburn v Colledge [1897] 1 QB 702 at page 706: “every fact which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court.” Diplock LJ gave a very similar definition in Letang v Cooper [1965] 1 QB 232 at pages 242-243. If what is estopped by cause of action estoppel is the raising of a cause of action according to this definition, then the Claimant’s contention would appear to be correct: the facts that the Claimant needs to prove to succeed in its present claims are different to the facts which it needed to prove to succeed in the claim advanced in the Registry proceedings.

The Claimant’s argument is also supported by the principle, which is well-recognised in patent litigation, that, where the validity of a patent is attacked, this does not give rise to a general issue as to validity which would require the patentee to give disclosure of all documents in its possession, custody or power relating to the validity of the patent. Instead, the patentee’s obligation of disclosure is limited to documents relating to the particular issues pleaded by the party attacking the validity of the patent, and such issues must be sufficiently (although not necessary fully) particularised: see Avery Ltd v Ashworth, Son & Co Ltd (1915) 32 RPC 560 and VISX Inc v Nidek Co [1999] FSR 1999. In my view this principle is equally applicable to attacks on the validity of trade marks.

In the context of the validity of patents and registered designs, however, there is a line of authority which suggests that a broader view of “cause of action” must be taken for the purposes of cause of action estoppel. I shall consider the cases in chronological order.

In Moore v Thomson (1890) 7 RPC 325, the plaintiff had previously sued the defendant for infringement of a patent. The defendant had challenged the validity of the patent, alleging that it was anticipated by two previous specifications, Paget and Laurent. By consent the proceedings were stayed before trial upon terms that the defendant withdrew his defence, submitted to an injunction and paid the plaintiff’s costs. Subsequently the plaintiff moved for contempt alleging that a new product produced by the defendant was an infringement of the same patent. The High Court and Court of Appeal of Ireland and the House of Lords all held that the defendant was estopped by the consent order from challenging the validity of the patent.

In the House of Lords, Lord Halsbury LC said at page 334 lines 30-42:

“I should say that I absolutely decline to go into the question of whether Paget’s and Laurent’s invention was an anticipation of Sir William Thomson’s. Whether those or either of them could have been effectually used against the maintenance of Sir William Thomson’s patent originally I decline to say. I decline even to discuss it because it would seem to me that nothing would be of worse example and more calculated to throw the law into confusion than that a person should be permitted to submit to a decree for an injunction when he is accused of infringement, and then indirectly (of course he could not do it directly, but apparently for a collateral purpose) to insist on arguments which, if well founded at all (I do not say they are), ought to have been urged, and successfully urged, at the time when he was in litigation with the Patentee, to show that the patent against which he was contending was of itself an invalid patent.”

It appears from this that the defendant would equally have been estopped from challenging the validity of the patent in separate proceedings.

In Deeley’s Patent (1895) 12 RPC 192 the patentee had previously sued the petitioner for infringement of a patent. The petitioner challenged the validity of the patent. Kay LJ held that the patent was invalid, and in particular that Claim 1 was anticipated by a patent of the petitioner’s ((1893) 10 RPC 181), and an appeal to the Court of Appeal was dismissed ((1893) 10 RPC 382). The patentee then applied to amend the patent, and the application was successful. In the meantime the defendant petitioned to revoke the patent, having obtained the Attorney-General’s fiat to do so. The defendant argued that Claim 1 was not substantially altered by the amendment, and accordingly that the plaintiff was estopped by the previous finding that Claim 1 was anticipated. A.L. Smith LJ delivering the judgment of the Court of Appeal rejected this argument, holding that the petition was a petition presented on behalf of the public, that from a legal point of view it was an accident that the petitioner was a party to the former litigation and that the change in procedure from the previous procedure of scire facias to that of petition had not changed the position.

Thus the reasoning in Deeley’s Patent was that the petitioner was now challenging the validity of the patent in a different capacity to the capacity in which he had previously challenged it. This reasoning is no longer applicable, since the need to obtain the Attorney-General’s fiat has long since been abolished, and under the CPR petitions have now been abolished as well: see Terrell on the Law of Patents (15^th ed.), paragraph 14.11. In any event, this reasoning would not have applied to successive petitions to revoke a patent.

In Shoe Machinery Co Ltd v Cutlan (No 2) (1896) 13 RPC 141, the plaintiff had previously sued the defendants for infringement of a patent. The defendants had alleged that the patent was invalid on various grounds including anticipation by various items of prior art. Romer J had rejected the attacks on the validity and held that the patent was valid ((1895) 12 RPC 342). Subsequently the plaintiff brought a second action against the same defendants for infringement of the same patent. In the second action the defendants again alleged that the patent was invalid relying upon anticipation by different prior art. It appears that the defendants had discovered the new prior art after the first action. The claimant objected that the validity of the patent was res judicata. Romer S upheld this objection, saying at page143 line 49-50 that “In my opinion, the question of the validity of the patent, the subject of the present action, is res judicata between these parties.”

He explained his reasons for this conclusion at page 145 lines 17-43:

“But a further point is now taken on behalf of the Defendants. It is said that they are entitled, in this action, to re-try the question of validity of the patent because they say they have discovered fresh material for impeachment - fresh alleged anticipations - and are entitled to have the issue of validity re-tried as to this fresh material on the footing material. In my opinion, they are not so entitled. If they were held to be so entitled, I do not see how there could be finality upon a question of this kind as between parties such as these. According to this contention a Defendant might fight his case piece-meal. He might raise such objections to the validity of the patent as thought convenient, and when he was defeated On those, might raise other points at his pleasure, and might in that way, try the case of validity of a patent piece-meal; and, so far as I can see, extend it over as long a period as he chose. In my opinion, a Defendant is not entitled to do that. When question of the validity of a patent is brought to trial, by reason of the Defendant challenging the question of validity, he is bound to put his whole case before Court, and if he does not do so it is his fault or misfortune. He cannot be allowed to put a part of his case, or to put his case in an incomplete manner. He is bound then, when that question is raised, to search and to find out all that he intends to rely upon in support of his contention that the patent is invalid.

For these reasons, it appears to me, that the Defendants are not entitled to have this question of validity re-tried because, as they say, they have found further material which would have assisted them if they had known of that material on the first trial — on the trial of the issue in that action. It appears to me that the Plaintiffs are right in their contention, and that, as between these parties, the Plaintiffs are entitled to say that this patent has been upheld, and is a good patent.”

Although various authorities were cited in argument, Moore v Thomson was not one of them. Romer J’s conclusion is consistent with it, however. Deeley ‘s Patent was not cited either, but the situation with which Romer J was concerned was distinguishable from that case anyway.

In Poulton v Adjustable Cover and Boiler Block Co (1908) 25 RPC 661 the plaintiff had sued the defendant for infringement of a patent. The defendant alleged that the patent was invalid on the ground of anticipation by prior use ((1905) 22 RPC 563). Subsequently the defendant had discovered a further prior use and petitioned for the patent to be revoked. The petition was successful ((1906) 23 RPC 183) and an appeal was dismissed ((1906) 23 RPC 506). On the inquiry as to damages in the infringement action, the defendant relied upon the revocation of the patent as a defence to the claim -for damages. The claimant contended that the defendant was estopped from setting up the invalidity of the patent. This contention was upheld by Parker J ((1908) 25 RPC 529) and the Court of Appeal. I note that Shoe Machinery v Cutlan was cited in argument in the Court of Appeal although it is not referred to in the judgments. I also note that Deeley ‘s Patent was referred to by Buckley LJ.

Vaughan Williams LJ said at page 663 lines 20-25:

“The Plaintiff obtained judgment in an action for the infringement of a Patent, and consequently upon that judgment there was an inquiry ordered as to the amount of damages sustained. The judgment so obtained by the Plaintiff is a judgment which made the matter of the infringement and the validity of the Patent res judicata as between these parties and created a perfect estoppel.”

Fletcher Moulton LJ said at page 663 lines 51-55:

“I am of the same opinion. The judgment obtained by the Plaintiff against the Defendant settled for ever, as res judicata between these parties, that this Patent is valid and that it was, infringed during the period that it was valid. So far as those issues are concerned the cause was terminated...”

Buckley LJ said at page 664 line 50 to page 665 line 8:

“I am not so clear upon this question, I confess, as my learned brothers are, but I can see a reason for answering the question in the same direction, and my reasons for concurring in the judgment are these. The judgment in the infringement action was of course a complete judgment inter partes. It contained a certain subsidiary Order -an Order for inquiry as to damages. That Order was a complete judgment inter partes, and it was an Order made upon a certain basis — namely, upon the basis, as established at that date, that the Patent was valid. You may express it thus, that there was a complete judgment inter partes to ascertain what damage the Plaintiff had sustained upon the footing that his Patent was valid. That being inter partes, res judicata cannot be affected by the fact that subsequently, upon a petition for revocation, the Patent was held to be invalid.”

In Parmenter v Malt House Joinery [1993] FSR 680 the plaintiffs sued the defendants for infringement of a registered design. The defendants attacked the validity of the registered design. During the course of the trial one of the defendants’ witnesses, an ex-employee of the plaintiffs, remembered that the plaintiffs had sold articles to which the registered design had been applied prior to the application date. After the judge had reserved judgment but before he had delivered it, the defendants applied to amend their pleadings and to adduce further evidence to allege this ground of invalidity. The judge dismissed the application on the ground that the criteria for admission of fresh evidence on appeal set out in Ladd v Marshall [1954] 1 WLR 683 were applicable and were not fulfilled because he was not satisfied that the new evidence could not have been obtained for use at the trial if reasonable diligence had been exercised. He also said that there would be no obstacle to the defendants raising the new attack in fresh proceedings. The Court of Appeal allowed an appeal from this decision.

Dillon LJ (with whom Nolan and Steyn LJJ agreed) said at page 683:

“In my view, the judge has misdirected himself in several respects in that judgment. First, if he is right that the new evidence could, with reasonable diligence have been acquired, it is not correct to say that there is no obstacle to the defendants raising that evidence in fresh proceedings for revocation of the registration. The well-established rules as to estoppel by res judicata, and in particular the rule that a party cannot bring a fresh cause of action to raise substantially the same issue as in his previous litigation, would necessarily in those circumstances preclude any further action being brought: see Henderson v Henderson 3 Hare 100 and Yat Tung Co Ltd v Dao Heng Bank Ltd [1975] AC 581.”

I note that neither Shoe Machinery v Cutlan nor Poulton v Adjustable Cover appear to have been cited, but nevertheless Dillon LJ’s judgment is consistent with those two authorities.

In Chiron Corp v Organon Teknika Ltd (No 6) [1994] FSR 449 the plaintiffs had sued the defendants for infringement of a patent. The defendants counterclaimed for revocation on the grounds of lack of novelty or obviousness over prior art including prior art relating to the Ross River virus. At trial the defendants abandoned reliance upon this prior art after objection had been taken to the admission of evidence about experiments which the plaintiffs had not been given the opportunity to inspect. The defendants said that there had been insufficient time to do full experiments which could be inspected. The judge held that most of the claims of the patent were valid and infringed, but that the defendants had a defence under section 44 of the 1977 Act due to the terms of licence agreement between the plaintiffs. The plaintiffs removed the offending provision from the licence agreement and brought fresh proceedings for infringement. In the second action the defendant counterclaimed for revocation relying upon the Ross River virus prior art. The plaintiffs applied to strike out these allegations. Aldous J acceded to this application on three alternative grounds.

First, he held that the allegations were barred by cause of action estoppel on the basis that the relevant cause of action was the claim that the patent was invalid. At page 455he said:

“I believe that there can be no doubt as to what was the cause of action raised by the defendants in their counterclaims in the 1992 actions. There, the only allegation was that the patent was invalid for the reasons set out in the particulars of objections. Thus the decision of the court that was sought was that the patent was invalid. That was decided in the plaintiffs’ favour, with the exceptions to which I have referred. That is the matter which the defendants now wish to relitigate. I believe that they are precluded from so doing. The validity of the patent as decided is res judicata between the parties.”

In support of this conclusion Aldous J cited the passages from Shoe Machinery v Cutlan and Parmenter v Malt House that I have quoted above. It does not appear that Poulton v Adjustable Cover was cited in argument, but his conclusion is consistent with it.

Secondly, Aldous J held that, even if the relevant cause of action was the claim that the patent was invalid having regard to the Ross River prior art, the allegations were still barred by cause of action estoppel. His reasoning was that invalidity having regard to the Ross River prior art had been pleaded by the defendants, the plaintiffs had led evidence on the matter which had been cross-examined to and then the defendants had abandoned their case before judgment.

Thirdly, Aldous J held that, even if there was no cause of action estoppel, there were no special circumstances which would justify the defendants having a second chance to establish their case with regard to the Ross River virus prior art. It appears that in so holding he was applying Henderson v Henderson, the relevant passage from which was set out in an extract from the speech of Lord Keith in Arnold v National Westminster Bank plc [1991] 2 AC 93 quoted by Aldous J earlier in his judgment.

Aldous J’s decision was upheld by the Court of Appeal in a decision reported as Chiron Corp v Organon Teknika Ltd (No 14) [1996] FSR 701. Again, it does not appear that Poulton v Adjustable Cover was cited.

Sir Thomas Bingham MR said at pages 707-708:

“The basic principles with which we are concerned are, for the purposes of resolving this application, in my view, straightforward and they are based, in essence, on preventing what may fairly be regarded as an abuse of the court’s process. There are, I think, two fundamental rules. One is that once a matter has been the subject of a final judicial decision it cannot ordinarily be re-litigated. This rule rests on the principle that it is not in the interests of the parties, or in the public interest, that the same point should be re-litigated over and over again. The second relevant rule is, as I should think, that it is the duty of parties to any action, be they plaintiffs or defendants, to bring forward their whole case when the matter is before the court. If a party is reasonably ignorant of matters which found a claim or a defence, then that may provide an exception to the general rule in some circumstances. If a party is, for any reason, unable to present its whole case then there are well-known procedures available. The most obvious is to ask for an adjournment, but alternative course open are to ask the Judge in the first instance to try a preliminary issue which, if resolved one way, may suffice to dispose of the case or to hear such issues as can be fairly tried and to reserve the remaining issues for later decision. What, in my understanding, is not permissible is for a party with more than one cause of action or more than one ground of defence to advance one of them and then keep the others in reserve for a rainy day. That seems to me to be in effect what the defendants are seeking to do here. [He then summarised the circumstances of the case and continued:] In those circumstances it would, in my judgment, be the most obvious abuse of process to allow a defence to be raised which could, and in my judgment, plainly should have been raised then. I find myself in complete agreement with the third reason on which the learned Judge based himself. That does not mean that I disagree with his first two reasons, but simply that his third reason seems to me adequate to dispose of this application and indeed to be unassailable.”

Roch LJ said at pages 709-7 10:

“For my part I am content to approach this case as one of issue estoppel...

This was an issue specifically raised in the first two actions. Further experiments were material which could have been adduced in those first two actions, but which by the decision of the defendants, were not so adduced. In those circumstances, in my judgment, the Judge was plainly right that the defendants in the present proceedings are estopped from raising the matter or, alternatively, and perhaps more accurately, that to allow the defendants to raise the Ross River virus matter again, would amount to an abuse of the court’s process.”

Saville LJ agreed with both judgments.

In Bühler AG v Chronos Richardson Ltd [1998] RPC 609 the plaintiff was suing the defendant for infringement of a European patent (UK). The defendant counterclaimed for revocation. The defendant had previously unsuccessfully opposed the grant of the European patent in opposition proceedings before the European Patent Office Opposition Division. The plaintiff applied to strike out the counterclaim, contending that the question of validity was res judicata. His Honour Judge Ford dismissed the application and the Court of Appeal dismissed an appeal.

Aldous LJ held that cause of action estoppel and issue estoppel could apply to a decision regarding the validity of a patent, but that the decision of the Opposition Division did not give rise to either cause of action estoppel or issue estoppel. He gave two reasons for saying that there was no cause of action estoppel. The first was that the causes of action in the two proceedings were not identical: one was a claim that the decision to grant the European patent be revoked on the grounds specified in Article 100 of the European Patent Convention, while the other was a claim that European patent (UK) be revoked on the grounds specified in section 72 of the 1977 Act, which were not identical to those in Article 100. The second, which he described at page 616 line 22 as “more fundamental”, was that the decision of the Opposition Division was not a final decision as to the validity of the patent, which under the European Patent Convention could only be decided by the courts of the contractingstates. (This was also the reason he gave as to why there was no issue estoppel.) In my judgment Aldous LJ’s second reason is the ratio decidendi of the case, and his first reason is obiter. In any event it is distinguishable from the present situation.

In Coflexip SA v Solt Offshore MS Ltd (No 2) [2004] EWCA Civ 213, [2004] FSR 34 the claimants had sued the defendants for infringement of a patent. The defendants counterclaimed for revocation. Laddie J held that the patent was valid and infringed. The Court of Appeal dismissed an appeal ([2001] RPC 9). In subsequent proceedings a third party claimed for revocation of the patent relying upon different prior art and the claimant counterclaimed for infringement. Laddie J held that the patent was invalid and made an order for revocation which was stayed pending an appeal ([2003] EWHC 812 (Pat)). The defendants then applied for the inquiry as to damages against them to be stayed pending the decision on that appeal. The claimants opposed the stay and argued that, even if the revocation of the patent were maintained on appeal, the defendants would be bound by cause of action estoppel. This argument was upheld by Jacob J ([2003] FSR 1892 (Pat), [2004] FSR 7). An appeal was dismissed by a majority of the Court of Appeal, albeit on slightly different grounds. (As it happens, the appeal against the finding of invalidity was subsequently allowed in Technip France SA’s Patent [2004] EWCA Civ 381, [2004] RPC 46; but that is immaterial for present purposes.)

In the Court of Appeal Peter Gibson LJ and Sir Martin Nourse gave a joint judgment. They held that Poulton v Adjustable Cover was binding on the Court, being both (a) correctly decided on the law as it then stood and (b) unaffected by subsequent House of Lords authorities, in particular Johnson v Gore Wood & Co [2002] 2 AC 1.

So far as (a) is concerned, they observed at [137] that the logic of Poulton was that:

“...the final decision in the earlier proceedings established, in a way which the defendant could not be allowed to challenge in subsequent proceedings, the fact of infringement of a valid patent...”

So far as (b) is concerned, they held that Arnold v National Westminster was authority that cause of action estoppel was an absolute bar to re-litigation unless there was fraud or collusion which justified setting aside the earlier judgment, whereas issue estoppel was subject to a limited exception where further material was found which could not have been adduced by reasonable diligence in the earlier proceedings. They also held that this was unaffected by Johnson v Gore Wood.

They went on to hold that, although there was cause of action estoppel preventing the defendants from asserting that the patent was invalid in respect of the pleaded instance of infringement which was considered at trial and in the judgment, there was no cause of action estoppel in respect of 14 other instances of infringement that were the subject of the inquiry. Instead they held that in the case of those instances of infringement the defendants would be estopped from asserting that the patent was not valid by issue estoppel unless they were permitted to rely upon the revocation.

Finally, so far as is material to the questions I have to consider, they held that the exception to issue estoppel identified in Arnold v National Westminster could not be invoked by the defendants so as to permit them to rely upon the revocation.

I note that Peter Gibson LJ and Sir Martin Nourse did not refer to Shoe Machinery v Cutlan, Parmenter v Malt House or Chiron v Organon, although the first and third of these cases are considered in the dissenting judgment of Neuberger LJ. It does not appear that Bühler v Chronos was cited.

In Agilent Technologies Deutschland GmbH v Waters Corp [2004] EWHC 2992 (Ch) Pumfrey J stated at [38]:

Pumfrey J went on at [46] to say that he thought that it should in principle be possible for the defendant to re-open the question of validity to the extent that the claimant’s contention on infringement was different from, or additional to that which it had previously made, and made possible grounds of invalidity not previously arguable; alternatively that the claimant might be constrained to interpretations of his claim that did not raise new issues. As he observed, however, he did not have to resolve this question since his conclusion on the question of construction of the claim made it unnecessary to do so. Accordingly, his observations are obiter. In any event, they have no bearing on the present situation.

What then is the position in the light of these authorities? It is convenient to begin with the question of issue estoppel raised by Roch LJ in Chiron v Organon and by Peter Gibson LJ and Sir Martin Nourse in Coflexip v Stolt.

So far as Chiron v Organon is concerned, at the end of his judgment Roch LJ seems to have put the matter more as one of abuse of process rather than issue estoppel. Having regard to this and to the fact that Saville LJ agreed with Sir Thomas Bingham MR as well with Roch LJ, I consider that the ratio decidendi of the Court of Appeal’s decision is that the defendants were guilty of abuse of process. As Sir Thomas Bingham MR was careful to say, however, the Court of Appeal did not decide that Aldous J was wrong to hold that the defendants were barred by cause of action estoppel.

As to Coflexip v Stolt, I am puzzled by the conclusions of Peter Gibson LJ and Sir Martin Nourse that there was both cause of action estoppel and issue estoppel with regard to the validity of the patent. With great respect, it seems to me that these conclusions confuse the claimants’ cause of action for infringement (which merged in the judgment) with the defendants’ cause of action for revocation (which was not established). I would point out that a claimant in a patent infringement action benefits from a presumption that its patent is valid, and therefore it is unnecessary for it to plead or prove that the patent is valid in order to succeed in its claim for infringement: see Terrell, paragraph 12.70 and the authorities cited therein (and compare section 72 of the 1994 Act). Thus the burden lies on the defendant to plead and prove that the patent is invalid if it so desires.

I recognise that, technically, a defendant can put the validity of the patent in issue by way of defence without counterclaiming for revocation (section 74(l)(a) of the 1977 Act). In practice this is rarely done, however. Furthermore, if invalidity were established by way of defence, an order for revocation would normally be a formality. In any event, it seems to me that, even where validity is put in issue by way of defence, the defendant is asserting invalidity of the patent and in that sense advancing a cause of action.

In Coflexip v Stolt the defendants had unsuccessfully counterclaimed for revocation.Their argument was that an order for revocation had been made in the later proceedings proceedings which was (a) an order in rem and not merely in personam, i.e. it extinguished the thing in question and thus could be relied upon by the whole world, and (b) an order ex tunc and not merely ex nunc, i.e. it had effect from the date of grant of the patent. The reason why the defendants, unlike the rest of the world, were unable to rely upon this had nothing to do with the extent of the claimants’ claim for infringement as presented at trial, but was due to their own failure to establish that the patent was invalid. As a result the defendants were barred by cause of action estoppel from asserting that the patent was invalid thereafter.

In any event, the distinction adopted by the majority judgment in Coflexip v Stolt between cause of action estoppel and issue estoppel with regard to the other instances of infringement does not undermine the general point which emerges from this line of authority that, where a party has unsuccessfully challenged the validity of a patent or registered design, the judgment (or perhaps, more strictly, the order consequent on the judgment) creates a cause of action estoppel which prevents that party from subsequently challenging the validity of that patent or registered design again even upon different grounds (except, possibly, in the circumstances considered by Pumfrey J in Agilent v Waters).

In attempting to understand why this is so, I consider that light is shed by Dillon LJ’s reference in Parmenter v Malt House to Henderson v Henderson. In Henderson v Henderson, there was a partnership between two brothers, Jordan and Bethel, with branches in Newfoundland and Bristol. The brothers’ deceased father had given Bethel £15,000 to hold in trust for Jordan. Following the death of Jordan, his widow and adult children took proceedings in Newfoundland for an account of the partnership and of the father’s estate held by Bethel for Jordan, Bethel pleaded cross-claims that Jordan was indebted to him on the balance of the partnership accounts, that the property derived from their father formed part of the assets of the partnership and that the estate of Jordan was indebted to him for a private debt. Bethel failed to appear to substantiate these claims and a decree was made against him in his absence for the taking of the accounts. Bethel again failed to appear on the taking of the accounts, and the Master found that £15,000 plus interest was due to Jordan’s widow and children but did not take an account of the partnership because Bethel had not produced the books. The plaintiffs obtained a decree for the amount found by the Master. When they sued Bethel in England on this decree, Bethel commenced proceedings in Chancery in respect of the claims he had not pursued in Newfoundland. Sir James Wigram V-C upheld a demurrer to this suit on the ground of res judicata.

It was in this context that Wigram V-C made his famous statement of principle at pages l14-115:

“In trying this question, I believe I state the rule of the court correctly, when I say, that where a given matter becomes the subject of litigation in, and of adjudication by, a court of competent jurisdiction, the court requires the parties to that litigation to bring forward their whole case, and will not (except under special circumstances) permit the same parties to open the same subject of litigation in respect of matter which might have been brought forward as part of the subject in contest, but which was not brought forward, only because they have, from negligence, inadvertence, or even accident, omitted part of their case. The plea of res judicata applies, except in special cases, not only to points upon which the court was actually required by the parties to form an opinion and pronounce a judgment, but to every point which properly belonged to the subject of litigation, and which the parties, exercising reasonable diligence, might have brought forward at that time.”

Wigram V-C went on at page 116 to observe that:

“…the whole of the case made by this bill might have been adjudicated upon in the suit in Newfoundland, for it was the very substance of the case there, and prima facie, therefore, the whole is settled.”

As he explained at page 118:

“The decree was to compute what was due to the plaintiffs for principal and interest; that is, upon all the accounts in question in the pleadings, including the partnership and private accounts.”

In The Doctrine of Res Judicata it is stated at paragraph 444 that Henderson v Henderson was a case of cause of action estoppel, citing in support dicta in Carl Zeiss Stiftung v Rayner & Keeler Ltd (No 2) [1967] 1 AC 853 at 916C (Lord Reid), 946F-G (Lord Upjohn), 966E-F (Lord Wilberforce) and Arnold v National Westminster at 107C (Lord Keith, with whom Lord Griffiths, Lord Oliver of Aylmerton and Lord Jauncey of Tullichettle agreed).

The learned editor of The Doctrine of Res Judicata, K.R. Handley (Handley JA of the Court of Appeal of New South Wales), has since re-iterated this point in a lecture to the Chancery Bar Association and the Institute of Advanced Legal Studies in December 2001, published at (2002) 118 LQR 397. As I understand his reasoning, a judicial account involves the offsetting of credit items on both sides to reach a balance in favour of one party. The result can only be final if all relevant claims and cross-claims are either brought forward for adjudication or treated as abandoned. As it was put by Hutley JA in Adams v Bank of New South Wales [1984] 1 NSWLR 285 at 296, “a party cannot…have little bits of accounts. There is one account and one accountonly and the issue is what is owed and what is not owed.” Accordingly, in Henderson v Henderson Bethel was to be taken irrevocably to have abandoned his claims in the Newfoundland proceedings and thus to be barred by cause of action estoppel from raising them in the English proceedings. (Although Wigram V-C said that there was an exception for “special circumstances”, the House of Lords held in Arnold v National Westminster that there was no such exception in the case of cause of action estoppel, as Peter Gibson LJ and Sir Martin Nourse noted in Coflexip v Stolt.)

Henderson v Henderson was applied in Public Trustee v Kenward [1967] 1 WLR 1062, another case involving accounts. The plaintiff, as trustee of a deceased’s estate, sued by writ for a balance found due from the defendant to the estate on an account in earlier administration proceedings to which the defendant was a party. The account included the affairs of a farming business carried out by the deceased and the defendant in partnership on land vested in the deceased. The defendant did not at that time suggest that the land was not the sole property of the deceased. On the plaintiff’s application for summary judgment, the defendant sought leave to defend on the ground that he had a counterclaim for a share in the proceeds of sale of the farm and the income thereof, and the cost of certain improvements, on the basis that the farm was an asset of the partnership. Buckley J held that the counterclaim was barred on the ground that the matter was res judicata saying at page 1068F-G that “it was something which, in the language of Wigram V-C, belonged to the subject of that inquiry and which the defendant, if he had exercised reasonable diligence, could have been brought forward at that time”. Again this appears to have been a case of cause of action estoppel.

It appears from the discussion at paragraphs 189-195 of The Doctrine of Res Judicata that this reasoning is not applicable only to cases involving accounts. There are a number of situations in which a party has a duty to bring forward all relevant matters for determination, and accordingly an adverse judgment will cover points which the party fails to bring forward as well as those which it does bring forward. Hence cause of action estoppel can bar re-litigation not only of issues that were litigated, but also of issues that were not litigated, the first time round.

At paragraph 190 of The Doctrine of Res Judicata an attack on the validity of a patent is given as one instance of this principle, with Shoe Machinery v Cutlan being cited in support. As can be seen from the discussion above, there are other authorities which also support this proposition. The applicability of the first part of the proposition to patents is also supported by the well-known statement of Aldous LJ, with whom Brooke and Roch LJJ agreed, in Lubrizol Corp v Esso Petroleum Co Ltd [1998] RPC at 790 lines 32-33 that “For my part, I believe it is a fundamental principle of patent litigation that a party must bring before the court the issues that he seeks to have resolved, so as to enable the court to conclude the litigation between the parties”. As he made clear, this is to enable the Court definitively to decide as between the parties whether the patent in suit is valid or invalid (or partially invalid).

It follows from this analysis that: (i) a person who attacks the validity of a patent or registered design is under a duty to put his full case in support of that attack at trial; and (ii) if he is unsuccessful, he will be barred by cause of action estoppel from attacking the validity of the patent or registered design in subsequent proceedings whether on the same or different grounds (except, possibly, in the circumstances identified by Pumfrey J). It appears that this is so even if he could not have discovered those different grounds by the exercise of reasonable diligence before the first trial, which may be thought somewhat harsh.

Having arrived at this conclusion, I do not believe it is necessary for present purposes to consider how cause of action estoppel (or merger, which as Diplock LJ made clear in Thoday v Thoday is the other side of the same coin) operates if an attack on the validity of a patent is partially successful or what the impact is of an application to amend the claims of the patent whether before or after judgment.

I turn then to consider the position with regard to trade marks. So far as I am aware, there is no authority with respect to trade marks comparable to the patent and registered design line of authority discussed above. The nearest cases are as follows.

In William Hunt & Sons, The Brades Ltd’s Application (1911) 28 RPC 302 the applicant had previously applied to have two trade marks, which had been registered as “old” (that is to say, pre-1876) marks but had been allowed to lapse, re-registered as “old” marks. This application was opposed by the opponents and refused by the Registrar on the ground that there was insufficient evidence of use of the marks. The applicant then brought a second application after having obtained fuller evidence. This was refused by the Registrar after a preliminary hearing on the ground of res judicata. The applicant appealed. On the appeal, it appeared that the opponents no longer wished to oppose the application. Parker J held at page 304 line 19 that the matter was “res judicata in a sense” as between the applicant and the opponent. Given that the opponents were not taking the point, however, he directed that the Registrar should proceed to consider the application on its merits.

In Massachusetts Saw Works’ Application (1918) 35 RPC 137 the applicant had applied in 1909 to register the word VICTOR as a trade mark in respect of hack-saw blades. The application was opposed by the opponent on the ground that it conflicted with the opponent’s prior registration of a trade mark which included the word VICTORY. The opposition was upheld by the Registrar. The applicant then applied in 1909 to register two label (i.e. device) marks of which the most prominent feature was the word VICTOR. These applications were again opposed by the opponent. The Registrar held that the matter was res judicata since in substance the new applications were for registration of the word VICTOR. An appeal was dismissed by Younger J who held at page 145 line 40 that the situation was “exactly analogous” with Hunt’s Application. I have to say that I regard this decision as unsatisfactory since the trade marks and the application dates were different, and the next two decisions I cite are to the opposite effect.

In Unilever Ltd’s (Striped Toothpaste No 2) Trade Marks [1987] RPC 13, the applicant had applied in 1971 to register a device showing striped toothpaste being squeezed onto a toothbrush in respect of “dentifrices”. The application was opposed by the opponent. The Registrar’s hearing officer dismissed the opposition, but Falconer J allowed an appeal on the grounds that the device was not a trade mark within the meaning of the Trade Marks Act 1938 and was not distinctive ([1984] RPC 155). In 1977 the applicant applied to register three devices, one of which was very similar but not identical to the device the subject of the 1971 application, and the words RED STRIPES in respect of toothpaste. The applications were again opposed by the opponent on the same grounds. The Registrar’s hearing officer upheld the oppositions and Hoffmann J dismissed an appeal. The opponent contended that there were issue estoppels in its favour as a result of the earlier proceedings, but Hoffmann J held that this was not the case since the issues were different: both the marks and the relevant dates were different. Massachusett’s Application does not appear to have been cited.

In Philips Electronics NV v Remington Consumer Products Ltd (unreported, Rimer J, 29 March 1999), the plaintiff had previously sued the defendant for infringement of a trade mark consisting of a drawing of the face plate of a three-headed electronic shaver registered as of 1985. The defendant counterclaimed for declaration of invalidity. Jacob J held that the trade mark was invalid ([1998] RPC 283). In 1994 plaintiff had applied to register a trade mark consisting of a drawing of a face plate of a three-headed shaver incorporating a clover leaf shape. This application was opposed by the defendant. After Jacob J’s decision, the defendant applied to the Registrar in effect for summary judgment on the opposition on the grounds of cause of action estoppel, alternatively Henderson v Henderson abuse of process. This application was dismissed by the Registrar’s hearing officer, although the hearing officer did grant a stay pending the decision of the Court of Appeal on the plaintiff’s appeal. Rimer J dismissed an appeal.

So far as cause of action estoppel was concerned, Rimer J held that the causes of action were different since the trade marks were different, applying Arnold v National Westminster and Unilever. Again, Massachusett’s Application does not appear to have been cited. As to abuse of process, he held that the plaintiff’s application was not an abuse of process essentially on the basis, as I understand it, that there was a realistic prospect that the Court of Appeal would reverse Jacob J. He therefore endorsed the decision to grant a stay. (In the event, the Court of Appeal referred the matter to the Court of Justice of the European Communities ([1999] RPC 809), and the Court of Justice gave a judgment favouring the defendant which is considered below.)

In my judgment none of these four cases has any real bearing on the question of cause of action estoppel in circumstances such as the present. The nearest case is Hunt’s Application, but there the applicant was making exactly the same application again having failed the first time. It was not a case of successive attacks on the validity of a registered mark on different grounds.

As a matter of principle, however, I cannot see any reason why the law with regard to cause of action estoppel as it has been developed in the patents and registered design cases should not apply to trade marks. I am encouraged in this view by paragraph 168 of The Doctrine of Res Judicata, which treats Poulton v Adjustable Cover as being applicable to trade mark infringement actions. (For the avoidance of doubt, I should make it clear that I am not considering the position where a person who has unsuccessfully opposed the registration of a trade mark then applies for a declaration of invalidity.)

In the present case, the Claimant is attacking the validity of the Defendant’s Mark after having unsuccessfully attacked the validity of the Defendant’s Mark in the Registry proceedings. For the reasons given above, I consider that the Claimant is barred from doing so by cause of action estoppel notwithstanding the fact that it now relies upon different grounds.

In my judgment, however, this cause of action estoppel does not extend to the Claimant’s present claim for revocation of the Defendant’s Mark. A claim for revocation of a trade mark is fundamentally different to a claim that the trade mark was invalidly registered. A claim that a trade mark is invalidly registered is a claim that the mark should never have been registered for whatever reason, and has wrongly remained on the Register ever since. It thus essentially concerns the position as at the application date (subject to the slight anomaly created by the proviso to section 47(1) of the 1994 Act). By contrast a claim that a trade mark should be revoked is a claim that the mark, even though it may have been validly registered, should be removed from the Register because of events occurring subsequent to registration e.g. because it has not been used by the proprietor for five years. The difference is illustrated by section 72 of the l994 Act, which creates a statutory presumption that the original registration was valid but has no application to claims for revocation (although an applicant for revocation will still bear the burden of proof, subject to the effect of section 100 of the 1994 Act which places an evidential burden on the proprietor of a trade mark to show what use has been made of it). This distinction between initial validity and subsequent revocation is not one which applies to either patents or registered designs (although the term “revocation” is used in those fields, it bears a different meaning to the meaning it bears in the field of trade marks). It might cause serious problems if an unsuccessful attack on the validity of a registration was held to be an absolute bar to a later claim for revocation. This is not to say that questions of issue estoppel or abuse of process cannot arise in such circumstances.

Although Henderson v Henderson itself was a case of cause of action estoppel, Sir James Wigram V-C’s dicta subsequently gave rise to a wider principle preventing re-litigation in circumstances not amounting to strict res judicata. This wider principle has come to be regarded as a manifestation of the court’s power to prevent an abuse of its own process.

The authorities on this wider principle were recently reviewed by Lord Bingham of Cornhill in Johnson v Gore Wood & Co [2002] 2 AC 1. Lord Bingham concluded at page 3l A-F:

“But Henderson v Henderson abuse of process, as now understood, although separate and distinct from cause of action estoppel and issue estoppel, has much in common with them. The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. As one cannot comprehensively list all possible forms of abuse, so one cannot formulate any hard and fast rule to determine whether, on given facts, abuse is to be found or not. Thus while I would accept that lack of funds would not ordinarily excuse a failure to raise in earlier proceedings an issue which could and should have been raised then, I would not regard it as necessarily irrelevant, particularly if it appears that the lack of funds has been caused by the party against whom it is sought to claim. While the result may often be the same, it is in my view preferable to ask whether in all the circumstances a party’s conduct is an abuse than to ask whether the conduct is an abuse and then, if it is, to ask whether the abuse is excused or justified by special circumstances. Properly applied, and whatever the legitimacy of its descent, the rule has in my view a valuable part to play in protecting the interests of justice.”

In Omega Engineering Inc v Omega SA [2004] EWHC 2315 (Ch) Engineering had applied in the Registry partially to revoke SA’s trade mark for non-use. In its statement of case Engineering alleged that the mark had not been used “for at least the last five years” and went on to request revocation pursuant to section 46(1)(a) or (b) of the 1994 Act. Mr D.W. Landau acting for the Registrar concluded that the registration should be partially revoked with effect from the application date, namely 14 September 2001 (BL O/0273/03). In so concluding he held that Engineering had not pleaded any earlier period of non-use than the five years preceding the application date, and hence any earlier date for revocation, contrary to its argument that it had pleaded non-use from completion of the registration procedure by virtue of the reference to section 46(l)(a). SA appealed. Engineering cross-appealed, contending that the revocation should be with effect from five years after the completion of the registration procedure, namely 1960. Jacob J dismissed both appeal and cross-appeal ([2003] EWHC 1334 (Ch), [2003] FSR 49).

Three days later Engineering commenced proceedings in the High Court claiming partial revocation of the trade mark with effect from 5 December 1960. SA applied to strike out these proceedings as an abuse of process. Master Bragge dismissed the application, but Rimer J allowed an appeal. In doing so he applied the test articulated by Lord Bingham in Johnson v Gore Wood that I have set out in paragraph 99 above. He concluded that Engineering both could and should have included the claim for partial revocation with effect from 1960 in the Registry proceedings and that, taking due account of the admissible private and public interests at stake, the High Court action was oppressive and an abuse of process.

Counsel for the Claimant accepted on the basis of this authority that a decision in Registry proceedings was capable of founding an objection to subsequent High Court proceedings on Henderson v Henderson abuse of process grounds. He also accepted that the claims made by the Claimant in the present proceedings could have been included in the Registry proceedings. He argued, however, that this was not a case where the present claims should have been included in the earlier proceedings, so as to make it an abuse of process to raise them now, because there was no significant legal or factual nexus between the present claims and the claim made in the Registry proceedings. In support of this argument he pointed to the fact that the claim made in the Registry proceedings was an attack on relative grounds whereas the claims made now were made on absolute grounds.

I am unable to accept this argument. While the ground of invalidity advanced in the Registry proceedings was legally and factually different from those now advanced, in that it depended upon the impact of use of the Defendant’s Mark upon the Claimant’s Mark, whereas the present grounds concern the qualities of the Defendant’s Mark itself, the factual background and the evidence in the Registry proceedings overlapped to a considerable extent with the factual background and evidence in these proceedings. Indeed, paragraph 2 of the Defendant’s counter-statement in the Registry proceedings and the enclosures referred to in paragraphs 14-16 above almost invited the Claimant to make the claims which it makes now, and provided considerable support for them. Indeed, the evidence relied upon by the Claimant in these proceedings includes very similar materials. Furthermore, as discussed in paragraphs 18-19 above, the Claimant filed evidence which could have supported such claims. Yet further, the hearing officer touched on the potential objection on absolute grounds in the passage in his decision which I have quoted in paragraph 21 above. In these circumstances I consider that the present claims not merely could have been included in the Registry proceedings, but should have been; and that, applying Lord Bingham’s test, it is oppressive for the Claimant to raise them now having failed in the Registry proceedings.

Counsel also argued that the Claimant was entitled to focus its attack in the Registry proceedings without being penalised subsequently, and that it was relevant that it would only recover nominal costs in the Registry proceedings even if successful. I do not accept these arguments either. If a party focuses its case on what it believes to be its strongest point, that does not entitle it to come back with further proceedings if it fails. The costs argument is, if anything, against the Claimant. Having chosen to bring proceedings in a low-cost and low cost-recovery forum, the Claimant had no reason not to include every available claim in the proceedings. As Counsel accepted, it is common for litigants in Registry proceedings to rely upon a multiplicity of grounds.

I cannot see that the Claimant has any private interest which justifies it in vexing the Defendant with an attack on the registration of the Defendant’s mark for a second time when it could and should have raised these claims in the first set of proceedings. While I acknowledge that there is a public interest in invalid registered trade marks and trade marks which have become liable to revocation being removed from the Register, I do not consider that this public interest justifies such re-litigation either. If it were otherwise, re-litigation of the validity of intellectual property rights would always be possible. After all, the public interest in invalid patents being revoked is, if anything, greater than the public interest in invalid trade marks being removed from the Register. There is no suggestion in the authorities considered above, however, that this justifies parties re-litigating the validity of patents.

By contrast, the Defendant has a legitimate private interest in not being vexed a second time. This is particularly so given that the Claimant is a large and financially substantial concern whereas the Defendant is small and in financial difficulties; but I would reach the same conclusion in the absence of this factor. There is also a public interest in the finality of litigation.

Accordingly, it is my judgment that the claims made in the present proceedings constitute an abuse of process. This extends to the claim for revocation as well as to the claims for a declaration of invalidity, since this claim also could and should have been included. In particular, on the Claimant’s pleaded case there was no material change of circumstances between the date of Mr Reynolds’ decision (4 February 2002) and the date of the commencement of these proceedings (25 April 2003) which could justify the Claimant applying to revoke the Defendant’s Mark now but not before. (The position could be different in a case where, say, a period of non-use had accrued in the interval sufficient to found an attack under section 46(1)(a) or (b) of the 1994 Act.)

Although Henderson v Henderson abuse of process is generally invoked as a ground for striking out a claim, I see no reason why it should not equally be relied upon as a substantive defence, which is how I interpret Mr Austin as putting the Defendant’s case, If I were wrong about that, I would strike out the Claimant’s remaining claims on this ground.

I therefore conclude that: (1) the Claimant’s remaining claims for a declaration of invalidity, but not its claim for revocation, are barred by cause of action estoppel; and (2) in any event, all the Claimant’s remaining claims are an abuse of process on Henderson v Henderson grounds.

In case I am wrong in these conclusions, however, I must go on to consider the merits of the Claimant’s remaining claims. I must also consider the Defendant’s counterclaim. Before doing so I shall describe the witnesses who gave evidence.

The only witness who gave evidence for the Claimant was Dr Nigel Young, an expert in the fields of computer systems and mathematics. Dr Young studied mathematics at Cambridge and has a doctorate in the field of applied mathematics from the same university. He also holds a Certified Diploma in Accounting and Finance and a Post-Graduate Diploma in Management Studies. He is also a Chartered Engineer, a Microsoft-certified systems professional, a member of the British Computer Society, a Fellow of the Academy of Experts (having been a member of its Council from 1995-2001 and again since 2004) and a UK representative on a body called Euroexpert. Having been employed by a number of companies in positions where he dealt with computer systems, Dr Young became a consultant. For about the last ten years he has acted extensively as an expert witness, to begin with mainly in civil proceedings but latterly in criminal proceedings as well.

I found Dr Young to be knowledgeable in the field of computer systems, and in particular the Internet, and to be careful and precise in his evidence. Mr Austin challenged Dr Young’s technical expertise in one respect, but in my judgment Dr Young was well-qualified from a technical point of view to give the evidence that he gave. In addition, Mr Austin attacked certain aspects of Dr Young’s evidence, and in particular contended that the methodology Dr Young had employed in carrying out searches of the Internet for the purposes of preparing his reports was flawed. In my judgment there is no substance in these criticisms. Mr Austin also made two more substantial points, however.

The first is that, as Dr Young accepted, Dr Young is not an expert in the English language. Moreover, at times in his evidence Dr Young was somewhat uncomfortable because, as I understood it, he felt that some of the questions he was being asked went outside his area of expertise and into questions of linguistics and/or law. For example, Dr Young was uncomfortable with the term “generic” and unwilling to express an opinion as to whether the word SPAMBUSTER had become “generic” or not. This raises the question of the extent to which Dr Young’s evidence, which in essence was as to the meanings of the words SPAM and SPAMBUSTER, is admissible. In addressing this question, it is necessary to bear in mind that (a) the Defendant’s Mark is registered in respect of “computer programming” services, (b) the Claimant contends that the Defendant’s Mark was in 1997, or had since become, descriptive or generic for such services and (c) Dr Young’s expertise embraces computer software.

It is well-established that, although evidence as to the meaning of ordinary English words is inadmissible, a suitably-qualified expert may give evidence as to the meaning of technical terms: see e.g. British Celanese Ltd v Courtaulds Ltd (1935) 52 RPC 171 at 196 lines 3-4 per Lord Tomlin and Glaverbel SA v British Coal Corp [1995] RPC 255 at 269 line 12 per Staughton LJ. It is also well-established that an expert giving evidence as to the meaning of a technical term may produce materials which support his evidence such as extracts from textbooks or manuals or scientific papers. Such materials may be illustrative of a term having a particular meaning even if they do not purport to define it.

I therefore consider that, as general proposition, Dr Young was entitled to give evidence as to the meanings of the words SPAM and SPAMBUSTER as technical terms and to produce illustrative materials to support his evidence. The method by which he obtained his illustrative materials, namely by carrying out searches of the Internet (including searches of the archive maintained at http://web.archive.org known as the Wayback Machine), is in my experience a novel one; but in the unusual circumstances of this case, where, as will appear, the words SPAM and SPAMBUSTER are ones whose meanings derive from a phenomenon of the Internet, I consider it to have been an appropriate method.

On analysis, however, some of Dr Young’s evidence was neither his own opinions as to the meanings of the words SPAM and SPAMBUSTER nor illustrative materials to support those opinions, but rather consisted of Dr Young relying upon hearsay statements made by others as to these and related matters. Although no formal hearsay notice appears to have been served by the Claimant, in substance the relevant requirements were complied with since the statements and their sources were clearly identified in Dr Young’s first report which was served together with the Particulars of Claim, I therefore consider such hearsay statements to be admissible, although the weight to be attached to them is another matter. I have attached such weight to these statements as I consider appropriate in each case.

The second point of substance made by Mr Austin with regard to Dr Young’s evidence is that Dr Young did not limit the materials he relied upon to those emanating from the UK, and many of them were of foreign, particularly American, origin. This is a fair point, since what matters is the meaning of SPAMBUSTER in the UK, not its meaning in the USA. On the other hand, Dr Young’s evidence was to the effect that this distinction was unimportant since the Internet is an international medium of communication, I would add that, in the field of computer programming, UK English to a very large extent follows US English. Nevertheless, in assessing the evidence in this case I have concentrated on what it shows about the position in the UK.

The only witness who gave oral evidence for the Defendant was Mr Austin. Mr Austin was also knowledgeable about computer systems, and in particular the Internet, through having been the managing director of software development companies from 1984 to 1995 and Cablenet’s managing director from 1995 to 2002. Counsel for the Claimant did not dispute that Mr Austin was qualified to give expert evidence as to the meaning of the words SPAM and SPAMBUSTER as technical terms. Nor did he make any criticisms of Mr Austin’s evidence. Indeed, it was in the light of Mr Austin’s evidence that the claim under section 3(6) was withdrawn.

Nevertheless, I regard Dr Young’s evidence as having been more impartial and objective than that of Mr Austin. For this reason, if it were necessary to prefer one to the other, I would prefer the evidence of Dr Young. In reality, however, it seemed to me that there was little serious dispute as to the facts, as opposed to the conclusions to be drawn from them.

In addition to Mr Austin’s evidence, the Defendant relied upon evidence given by Ms Victoria Jones and Mr John Potter, two former employees of Cablenet. The Claimant did not challenge their evidence and so neither was required to attend for cross-examination,

Each of the Claimant’s claims for a declaration of invalidity calls for an assessment of the distinctiveness of the Defendant’s Mark, that is to say, its capacity to distinguish the services of one undertaking from those of other undertakings. It is now well-established that the distinctive character of a mark must be assessed in relation to the goods or services in respect of which registration is applied for or obtained as the case may be and by reference to the perception of the average consumer of such goods or services.

The Defendant’s Mark is registered in respect of “computer programming” services in Class 42. It is not registered in respect of “computer programs” in Class 9, although the distinction is not a sharp one in the circumstances of this case, for reasons that will appear. The average consumer of such services is likely to be a business person rather than a domestic consumer. Such a person is likely to have some knowledge about computers and computer software, but may not be an expert in such matters.

It is also well-established that what matters is the overall impression given by the mark as a whole, although in assessing the impact of the whole it is permissible to consider the parts from which it is made up provided that the tribunal does not engage in a salami-slicing approach.

Section 3(l)(c) implements Article 3(1)(c) of the Directive and corresponds to Article 7(1)(c) of the Regulation. These provisions have been considered by the European Court of Justice in a number of cases, in particular Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber [1999] ECR 1-2779, Case C-383/99P Procter & Gamble Co v Office for Harmonisation in the Internal Market (BABY-DRY) [2001] ECR I-6251, Joined Cases C-53/01 and C-55/01 Linde AG v Deutsches Patent- und Markenamt [2003] ECR 1-3161, Office for Harmonisation in the Internal Market v Wm Wrigley Jr Co (DOUBLEMINT) [2004] ETMR 9 and Case C-363/99 Koninkliijke KPN Nederland NV v Benelux-Merkenbureau (POSTKANTOOR) [2004] ETMR 57. The Court has repeatedly stressed that these provisions serve a public interest, which is to ensure that descriptive terms are free for use by all.

In DOUBLEMINT the Court stated:

“29.

Article 7(1)(c) of Regulation No 40/94 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered.

30.

Accordingly, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark, without prejudice to the possibility of their acquiring distinctive character through use under Article 7(3) of Regulation No 40/94.

31.

By prohibiting the registration as Community trade marks of such signs and indications, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see, inter alia, in relation to the identical provisions of Article 3(1)(c) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Windsurfing Chiemsee, paragraph 25, and Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR 1-3161, paragraph 73).

32.

In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provisions itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.”

In POSTKANTOOR the Court stated:

“57.

It is irrelevant whether there are other, more usual signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark concerned consists. Although Art. 3(1)(c) of the Directive provides that, if the ground of refusal set out there is to apply, the mark must consist exclusively of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that those signs or indications should be the only way of designating such characteristics.

…

97.

It is not necessary that the signs and indications composing the mark that are referred to in Art. 3(1)(c) of the Directive actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of the provision itself indicates, that those signs and indications could be used for such purposes. A word must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see to that effect, in relation to the identical provisions of Art. 7(1)(c) of [the Regulation] Case C-19l/01P OHIM v Wrigley [2003] ECR 1-0000, para. [32].)”

The Claimant’s case is that the Defendant’s Mark was registered in contravention of section 3(l)(c) because it consists exclusively of the word SPAMBUSTER (albeit in a particular stylised presentation) and as at the date the Defendant’s Mark was applied for, 5 December 1997, at least one of the possible meanings of that word designated a characteristic of the services concerned. Furthermore the Claimant contends that the Defendant’s Mark had not acquired distinctiveness through use either then or by the date on which these proceedings were commenced, 25 April 2003.

So far as the meaning of the word SPAMBUSTER as at 5 December 1997 is concerned, I find the facts established by the evidence to be as follows:

Before proceeding with the analysis under section 3(l)(c), it is convenient at this juncture to consider the factual position as at later dates. So far as the meaning of the word. SPAMBUSTER as at 25 April 2003 is concerned, I find the facts established by the evidence to be as follows:

To bring the position right up to date, during the trial the parties jointly carried out a search of the Internet for the term SPAMBUSTER using the well-known search engine Google, the results of which are agreed. This produced 13,100 hits and a sponsored link to “Spam Buster www.spamjab.com Spam Filter that really works” which takes one to a UK site offering an anti-SPAM program called “Spamjab”. The first hit listed was for “Spam Buster” the Contact Plus Corporation product. The second hit was for an article dated 14 November 2004 in CIO Today, an American online news service, headed “Bill Gates: Spambuster” about a speech made by Mr Gates concerning Microsoft’s efforts to deal with SPAM. The third hit was for a domain name for sale. The fourth hit was for “Spambuster”, anti-SPAM program supplied by Worldlink Inc, an American ISP. The fifth hit was for a Microsoft MSN help page entitled “Spam Buster” which contains tips on dealing with “Junk E-Mail”. The sixth hit was for “free spambuster downloads” offered by www.handyarchive.com comprising “SPAMfighter Exchange Module”, “SPAMfighter Pro”, “SPAMfighter” and “Spam Buster”. The seventh hit was for an article dated 10 September 2004 in Manchester Online, a UK online regional news service operated by Guardian Media Group, headed “Spambuster’ Steve honoured” about Steve Purdham, “the chief executive of Cheshire Internet filtering firm SurfControl”. The eighth hit was for “SpamBuster” an anti-SPAM program supplied by Tucows Inc, an American company. It is unnecessary to go on. I would add, however, that Mr Austin told me that Google orders hits by popularity as well as well as by relevance, so that popular sites will appear higher on a list of hits than unpopular ones.

It follows from these facts that, as at 5 December 1997 (and as at 25 April 2003 and as at December 2004), at least one of the possible meanings of the word SPAMBUSTER designated computer programming services for preventing or combating SPAM in the sense of unsolicited commercial electronic messages.

As Mr Reynolds correctly recognised in his decision in the passage quoted in paragraph 21 above, the specification of services of the Defendant’s Mark extends beyond computer programming services for preventing or combating SPAM and would embrace, for example, computer programming services in the field of airline reservation systems. Mr Austin was entirely candid, however, that it was never the Defendant’s intention that the Defendant’s Mark should be used in relation to services other than anti-SPAM computer programming services. When this point was discussed during closing submissions, Mr Austin said that the Defendant was prepared to surrender the registration in so far as it extended beyond such services, and undertook to file a Form TM23 at the Registry to achieve this. On this basis, Counsel for the Claimant indicated that the Claimant would not pursue its claims with regard to the part of the registration which the Defendant was prepared to surrender. Accordingly, I only have to consider the registration in so far as it relates to anti-SPAM computer programming services i.e. services for preventing or combating SPAM.

If the Defendant’s Mark consisted of the word SPAMBUSTER per se, i.e. in any form and not just in the stylised presentation set out in paragraph 4 above, then it would be clear from my conclusions so far that it was not registrable by virtue of section 3(l)(c) unless it had acquired distinctiveness through use.

Does it make any difference that the Defendant’s Mark consists not of the word per se but of the word in a particular stylised form? Mr Austin argued that the Defendant’s Mark does not consist exclusively of a descriptive word but also comprises fancy coloured lettering. In support of this argument Mr Austin relied upon the evidence of Ms Jones, who was employed by Cablenet as its “webmistress”, that she had designed this lettering using an unusual cartoon font and the colours yellow (since yellow was the background colour of all Cablenet’s webpages) and red (to be bright and warning).

In Case T-32/00 Messe München GmbH v Office for Harmonisation in the Internal Mark [2001] ETMR 13 the applicant applied to register a stylised version of the word ELECTRONICA in respect of various goods and services relating to electronic components. The stylisation consisted of the use of Helvetica font. The examiner held that registration was precluded by Article 7(1)(b) and (c) of the Regulation, and the Board of Appeal dismissed an appeal. The Court of First Instance dismissed an appeal, holding that the mark was “purely descriptive” and therefore registration would be contrary to Article 7(l)(b) and (c).

The Court began its examination by stating:

“30.

The Court notes first of all that the word ‘electronica’, as it appears in the trade mark application, is written in helvetica script.

31.

However, using that script does not add any figurative or other feature capable of distinguishing the word ‘electronica’, having regard, inter alia, to its functional use as a simple word mark. Furthermore, in the application form, the applicant, faced with a choice between the designations ‘word mark’, ‘figurative mark’, ‘three-dimensional’ and ‘other’, chose the latter, specifying ‘script’ (‘Schriftzug’).

32.

The trade mark ‘electronica’ must therefore not be regarded as figurative in any way but as a simple word mark.

33.

Secondly, it must be determined whether the mark has distinctive character or is purely descriptive.”

In “CYCLING IS...” Trade Mark Applications [2002] RPC 37 the applicant applied to register a series of two marks consisting two presentations of the incomplete phrase “CYCLING IS...”. Both marks included opening and closing inverted commas, an initial upper case C for the word CYCLING with the remaining letters being lower case, IS in upper Case and three dots. The different between the two marks was that in the first mark all the elements were printed on one line, whereas in the second mark “CYCLING was printed on one line and IS...” on a separate line below.

In a decision given after the judgment of the Court of Justice in BABY-DRY but before its judgments in Linde and DOUBLEMINT, Geoffrey Hobbs QC sitting as an Appointed Person held that the marks were objectionable under section 3(l)(b) but not section 3(l)(c). In relation to section 3(l)(c) he stated:

“62.

The signs in issue look and sound like the opening words of an emphatic statement relating to cycling. The ellipsis visibly (and when represented audibly by a pause) invites people to add meaning to the words.

…

64.

… The expression ‘cycling is’ cannot be described as a syntactical unusual juxtaposition of words in the nature of a lexical invention. The combination of words does not lack descriptive power, but the description is incomplete. And then there are the presentational elements of the signs to be taken into account.

65.

I do not think that the signs as a whole are caught by the exclusion from registration contained in Article 3(l)(c)/section 3(l)(c) because I do not think that they can be said to consist ‘exclusively’ (i.e. simply and solely, as contemplated by the ECJ in BABY-DRY) of matter that is descriptive, of the kind or characteristics of the goods and services for which registration has been requested.”

It appears from this that the presence of the inverted commas and ellipsis, and possibly the use of a mixture of upper case and lower case letters, in the marks was a significant factor in the decision that registration was not precluded by section 3(l)(c).

A factually similar case is T-91/01 BioID AG v Office for Harmonisation in the Internal Market [2003] ETMR 60. In that case the applicant applied to register a mark consisting of a stylised presentation of “BioID.®” in respect of a range of goods and services relating to biometrical identification. The stylisation consisted of the use of Arial font, with “Bio” in bold, the use of upper cases letter B and ID, the inclusion of a square dot and the inclusion of an ® symbol as a superscript over the dot. The examiner held that registration was precluded by Article 7(l)(b) and (c) and his decision was upheld by the Board of Appeal.

The Court of First Instance dismissed the appeal on the ground that the application did not comply with Article 7(1)(b). It first held that the sign BIOID was non-distinctive since it was recognised as an abbreviation of “biometrical identification”. It then proceeded to consider whether the graphical elements of the mark were distinctive, and held that they were not. Finally it considered whether the combination of these elements was distinctive and concluded that it was not. Having reached this conclusion, the Court did not find it necessary to consider Article 7(1)(c). Accordingly this case is of no assistance with regard to section 3(l)(c).

In my judgment the present case is indistinguishable from Messe München v OHIM and distinguishable from “CYCLING IS”. In “CYCLING IS” the description was, as Mr Hobbs pointed out, incomplete. Moreover, the marks included punctuation signs in addition to the descriptive words. The fact that they were additional is emphasised by Mr Hobbs’ observation that in oral use the ellipsis would be represented by a pause. Although the coloured cartoon font employed in the Defendant’s mark is much less common than the font under consideration in Messe Mñnchen v OHIM, it still amounts to a way of writing the descriptive word SPAMBUSTER. Thus the Defendant’s Mark contains nothing additional to the word SPAMBUSTER, it merely represents that word in one particular manner. In oral use the visual presentation would disappear, leaving just the word SPAMBUSTER.

In this connection I note that in POSTKANTOOR the Court of Justice stated:

“98.

As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Art. 3(1)(c) of the Directive. Merely bring those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned.

99.

However, such a combination may not be descriptive within the meaning of Art. 3(l)(c) of the Directive, provided that it creates an impression which is sufficiently far removed from that produced by the simply combination of those elements. In the case of a word mark, which is intended to be heard as much as to be read, that condition must be satisfied as regards both the aural and the visual impression produced by the mark.”

The last sentence quoted might be interpreted as meaning that a mark is unregistrable under section 3(l)(c) if the aural impression it gives is no more than that of designating characteristics of goods or services, regardless of how visually distinctive it might be. For reasons I will explain below, I consider that to interpret the sentence in this way would be to go too far. Nevertheless, the Court is clearly saying that the aural impact of a mark is an important consideration.

If the Defendant had registered the word SPAMBUSTER per se, the registration would have embraced any representation of that word, including the Defendant’s Mark. Thus this hypothetical registration would have been protected from revocation for non-use by use solely of the Defendant’s Mark and it would have been infringed under section 10(1) or 10(2)(a) of the 1994 Act by use of a sign identical to the Defendant’s Mark by a third party in relation to the same or similar services.

Given that this hypothetical registration embracing the Defendant’s Mark would be barred by section 3(l)(c), I consider that it cannot be right that the Defendant should be able to circumvent the prohibition by restricting the registration to just the Defendant’s Mark. To permit this would be akin to allowing registration (subject to other objections) of DIRTREMOVER for “cleaning products” merely because it was represented in a fancy script. In my view this would be to drive a coach and horses through section 3(l)(c).

In saying this, I recognise that a possible justification for regarding the Defendant’s Mark as free from objection under section 3(1)(c), and hence registrable if free from objection under the remainder of section 3, is that such a registration would confer narrower rights than a registration of the word per se. I am not convinced, however, that this justification is consonant with the public interest which the Court of Justice has held underlies section 3(1)(c). If descriptive words are to be free for use by all, then the public should be able to use them without having to search to see if any particular representation of such words has been registered. Furthermore, the practical effect of registering a mark like the Defendant’s Mark would be to give the proprietor rights in the word extending beyond the specific representation.

In my judgment this conclusion is consistent with the wording of section 3(l)(c) and Article 3(l)(c) because the Defendant’s Mark does consist exclusively of a prohibited sign. Nothing has been added to that sign. It is merely that the Defendant has selected one particular visual representation of the prohibited sign out of the many possible visual representations. Despite the fact that a particular visual representation has been selected, the mark remains wholly descriptive.

I would add two points. The first is that the position would be different if the Defendant’s Mark was a device mark containing elements additional to the word SPAMBUSTER. If, for example, the Defendant had registered a device comprising SPAMBUSTER in a particular script followed by an exclamation mark and surrounded by an oval, then the mark would not consist exclusively of signs or indications of the kind proscribed by section 3(1)(c). I recognise that in oral use such visual elements would disappear just as much as the fancy coloured font of the Defendant’s Mark disappears, which is why I said above that I did not think the Court of Justice’s statement in paragraph 99 of POSTKANTOOR should be interpreted too widely. Given this, it might be objected that the distinction I have drawn between a stylised word mark and a device mark is illogical. In my view it is logical, since a device is not the same thing as a word. Whether it is logical or not, however, the distinction seems to me to be one which is dictated by the legislation.

Secondly, I consider that there is an important difference between the test under section 3(1)(c) and the test under section 3(l)(b). Under section 3(l)(b) the question is whether the mark propounded for registration taken as a whole is or is not devoid of distinctive character. If a word is sought to be registered, the question is whether the word per se is distinctive i.e. regardless of what visual presentation might be adopted. If a device is sought to be registered, then the question is whether the device is distinctive, which necessarily brings in the effect of the visual elements of the device even if the device also includes one or more words. Under section 3(1)(c) the question is whether the mark propounded for registration consists exclusively of one or more descriptive signs. If it does, then registration is precluded in the public interest. If the mark is not a word per se, then the question is whether or not the visual elements take the sign out of the realm of section 3(1)(c). For the reasons I given, I consider that this depends on whether the visual elements include something additional to the word as opposed to a representation of the word.

I therefore conclude that the registration of the Defendant’s Mark was at all material times prohibited by section 3(1)(c) unless it had acquired distinctiveness through use. Before considering that question I shall deal briefly with the objections under section 3(l)(b) and (d).

Section 3(l)(b) implements Article 3(l)(b) of the Directive and corresponds to Article (l)(b) of the Regulation. The Court of Justice has made it clear that this forms an independent ground of objection to that under section 3(l)(c), so that a decision that a mark is not precluded from registration by section 3(l)(c) does not mean that the mark is necessarily free from objection under section 3(1)(b): see e.g. Linde at paragraph 67 and POSTKANTOOR at paragraphs 69-70.

If I am wrong in my conclusion with regard to section 3(l)(c) because the stylised presentation of the Defendant’s Mark means that it does not consist exclusively of a descriptive word, it is nevertheless my assessment that the Defendant’s Mark was at all material times devoid of distinctive character unless it had acquired such a character through use. As Mr Austin accepted, the use of fancy fonts and colours is fairly common on websites. Given this and given the descriptive nature of the word as set out above, I do not consider that the degree of stylisation of the word SPAMBUSTER in the Defendant’s Mark is sufficient to make the average consumer perceive the Defendant’s Mark as origin specific rather than origin neutral without being educated through exposure to use of the Mark: cf. “CYCLING IS... “and BioID.

This conclusion is reinforced by the fact that, unsurprisingly, Cablenet did not merely use the word SPAMBUSTER in the form of the Defendant’s Mark, it also used it in plain typescript. Thus the Defendant’s licensee itself used the Defendant’s Mark as merely a particular representation of the word SPAMBUSTER and not as some different entity.

Section 3(1)(d) implements Article 3(1)(d) of the Directive and corresponds to Article 7(l)(d) of the Regulation. Article 3(l)(d) was considered by the Court of Justice in Case C-S 17/99 Merz & Krell GmbH & Co v Deutsches Patent- und Markenamt [2001] ECR 1-6959. The Court held that Article 3(l)(d) was to be interpreted as only precluding registration of a mark where the signs or indications of which the mark was exclusively composed had become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services in respect of which registration of the mark was sought. It also held that it was immaterial for this purpose whether or not the sign in question was descriptive. Thus the essence of the objection is that the sign is generic either amongst the general public or amongst the trade.

In my judgment the Claimant has not established that, as at 5 December 1997, the word SPAMBUSTER had become customary either in the current language or in the bone fide and established practices of the trade to designate computer programming services for preventing or combating SPAM. While that meaning of the word would have been understood by the average consumer of such services, and some people were using the word in that sense, the word was not in common use either amongst the general public or amongst those in the trade. Thus I do not think that it can be said to have become customary.

So far as use of the Defendant’s Mark is concerned, I find the facts established by the evidence to be as follows:

It follows from these facts that there is no question of the Defendant’s Mark having acquired a distinctive character as at 5December 1997. That is not the end of the matter, however, since by virtue of the proviso to section 47(1) it would be sufficient for the Defendant’s purposes if it had acquired a distinctive character by 25 April 2003.

In my judgment, it is probable that by April 2002 Cablenet’s subscribers would have come to perceive the Defendant’s Mark as being used by it as a trade mark for its SPAM filtering program and service. (During the following year the Defendant’s Mark was unused, but I do not consider that this makes any difference to the position.)

Does this mean that the Defendant’s Mark had acquired a distinctive character in the perception of the average consumer? The Court of Justice held in Windsurfing Chiemsee at paragraph 52 and in Case C-299/99 Koninliijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR 1-5475 at paragraph 61 that it is sufficient for this purpose that the sign should be perceived by a significant proportion of the relevant class of persons as distinguishing the goods or services of one undertaking from those of other undertakings. The question, therefore, is whether Cablenet’s 3,000 subscribers constituted a significant proportion of the class of person who at that time were consumers of computer programming services for preventing or combating SPAM.

In my judgment the answer to this is no. On the contrary, I consider that Cablenet’s subscriber base constituted a rather small proportion of the relevant class of persons. The large majority of the relevant class of persons would have been unaware of Cablenet’s use of the Defendant’s Mark. Moreover, by 25 April 2003 the words SPAM and SPAMBUSTER had achieved a greater descriptive currency in the relevant field than they had had as at 5 December 1997 (and by December 2004 this was even more so). Thus any effort by Cablenet to make the Defendant’s Mark distinctive amongst those outside its subscriber base, had there been any, would have encountered a tide flowing strongly in the opposite direction. (To say nothing of the impact of use of the word SPAMBUSTER or variants thereof as a trade name by third parties.)

I therefore conclude that the Defendant’s Mark had not acquired a distinctive character by 25 April 2003.

Section 46(1)(c) implements Article 12(2)(a) of the Directive and corresponds to Article 50(1)(b) of the Regulation. It gives rise to two main issues. First, had the Defendant’s Mark become the common name in the trade for a service in respect of which it is registered by 25 April 2003 or earlier? Secondly, if so, was this due to acts or inactivity of the Defendant?

In Case C-371/02 Björnekulla Frukindustrier AB v Procordia Food AB [2004] ETMR 69 the Court of Justice held that, in cases where intermediaries participate in the distribution to the consumer or the end user of a product which is the subject of a registered trade mark, the relevant circles whose views fall to be taken into account in determining whether that trade mark has become the common name in the trade for the product in question comprise all consumers and end users and, depending on the features of the market concerned, all those in the trade who deal with product commercially.

One important question which arises is whether these provisions require that it be shown that the trade mark has become the common name in the trade for the goods or services in question or whether it is sufficient that it has become the common name.

The reason why this is important is that the evidence does not establish that by 25 April 2003 the word SPAMBUSTER had become the common name in the trade for computer programming services to prevent or combat SPAM. On the contrary, it established that a variety of descriptive terms for such services was in use by that date. In my judgment the evidence does establish, however, that by that date the word SPAMBUSTER had become a common name in the trade (including end users, in accordance with Björnekulla) for such services. Mr Austin argued that the evidence did not even go this far since Dr Young had not presented any statistical evidence as to the frequency of use of the word, but in my view this argument is misplaced since the test is not a quantitative one but a qualitative one.

The literal wording of section 46(1)(c), Article 12(2)(a) and Article 50(l)(b) suggests that what must be shown is that the trade mark has become the common name and not merely a common name. It is well-established, however, that European legislation is to be interpreted teleologically rather than necessarily in accordance with its literal wording. In my judgment, the purpose of these provisions, which is to enable marks to be removed from the register if they cease to fulfil their essential function of enabling consumers to distinguish the goods or services of one undertaking from those of others, would be defeated if the provisions were interpreted in this way. If a trade mark has become a common name for goods or services for which it is registered, then it can no longer perform this essential function even if there are also other common names for those goods or services.

The next question is whether it makes any difference that the Defendant’s Mark is not the word SPAMBUSTER per se but a stylised presentation of it. In my judgment this makes no difference for essentially the same reasons as I have given in the context of validity.

Thus I conclude that the Claimant has established that by 25 April 2003 the Defendant’s Mark was a common name in the trade for computer programming services to prevent or combat SPAM.

The Claimant does not rely upon any acts of the Defendant, but upon its inactivity in failing to take steps to prevent the word SPAMBUSTER from becoming a common name in the trade e.g. by using the mark widely, publicising its registration, notifying appropriate bodies that the Defendant’s Mark was registered, warning infringers and so on. It is clear from the evidence that neither the Defendant nor Cablenet took any such steps. The question therefore is whether this inactivity was causative of the Defendant’s Mark becoming a common name.

Here a question which arises is whether it must be shown that the proprietor’s inactivity was the sole cause or whether it was sufficient that it was a cause. In my view it is not necessary to show that the proprietor’s inactivity was the sole cause, it is sufficient to show that it was a cause. Again I consider that the contrary interpretation would not give effect to the purposes of these provisions.

In my judgment the Defendant’s inactivity in failing to take steps such as those referred to in paragraph 170 above in the period from December 1997 to April 2003 was a cause of SPAMBUSTER becoming a common name in the trade for the relevant services. In reaching this conclusion I have taken into account the nature of the Defendant’s Mark. I consider that a proprietor who registers a highly descriptive trade mark bears a heavier burden to take steps to prevent it becoming a common name than one who registers an inherently distinctive mark.

I therefore conclude that the Claimant’s claim for revocation is made out as at 25 April 2003. I am not satisfied, however, that the Claimant has established that grounds for revocation existed at an earlier date, Although I have found in sub-paragraphs 1 28(vi) and (vii) above that SPAMBUSTER was already being used descriptively as at 5 December 1997, I am not satisfied that it was a common name in the trade for the relevant services at that date. The evidence suggests that it became a common name at some time during the period between 5 December 1997 and 25 April 2003, but does not enable me to pinpoint when.

I propose to deal with the Defendant’s counterclaim fairly briefly since I do not consider that the Defendant has come anywhere near establishing that the Claimant’s Mark is either invalidly registered or liable to revocation.

So far as section 3(1)(d) is concerned, the Claimant’s Mark already possessed a distinctive character when the application to register it was made on 25 November 1938 since, as noted above, it consisted of an invented word. There is simply no evidence that it was customary in the current language or bona fide and established practices in the trade at that date. In any event it plainly acquired a distinctive character through use thereafter.

As to section 46(l)(c), since 1938 the Claimant’s Mark has become a household name. In such circumstances it is not surprising that occasionally it is used by way of synecdoche to stand for canned luncheon meat generally in the same way as, for example, PERRIER is sometimes used to stand for carbonated mineral water generally (the synecdoche being the use of the species to stand for the genus). This does not mean that it has necessarily become truly generic, still less that this is due to the acts or inactivity of the Claimant.

The highpoint of the Defendant’s evidence on this topic consists of two exchanges of correspondence. The first consists of a letter from Mr Austin addressed to the managing director of Ridpath Pek Ltd dated 25 July 2003 and an email in reply from Mr Adrian Morrish of Ridpath Pek dated 7 August 2003. Ridpath Pek is a supplier of canned luncheon meat marketed under the mark PEK and a competitor to the Claimant. In his letter Mr Austin asked “whether you agree that spam is a generic term in the trade for cooked pork luncheon meat”. Mr Morrish replied “… I regret we are unable to be of much assistance. We would however confirm that in our view the word SPAM is associated in the public mind with a cooked Ham/Pork product in a can.” Contrary to Mr Austin’s argument, I do not interpret Mr Morrish as having agreed that SPAM was a generic term. I believe that the “cooked Ham/Pork product in a can” to which he was referring was the Claimant’s product.

The second consists of a letter from Mr Austin addressed to the editor of the Oxford English Dictionary dated 11 October 2003 and a reply from Mr Angus Stevenson of Oxford University Press, who describes himself as “Project Manager, English Dictionaries and Thesauruses” dated 19 December 2003. In his letter Mr Austin queried the fact that the Concise Oxford English Dictionary (10^th ed.) “states that spam is a trademark and a tinned meat product made mainly of ham as well as used to describe inappropriate messages sent on the Internet” whereas “your previous edition of the Dictionary published in around 1996 ... states that spam is loosely used as an expression to mean tinned pork and ham meat product”. Mr Stevenson replied:

“We do sometimes show words which are trademarks with a lower case initial (examples are biro, cashpoint), but only where we have ample evidence that this form is in widespread or dominant use. Trademarked terms tend to be included in our dictionaries when they start to be used generically, i.e. when people say spam when they mean any similar cold meat, not necessarily spam itself.

We acknowledge in our dictionaries that the meat sense is a trademark. The word itself, when used in other senses, cannot be trademarked.

The meat sense of spam is still shown first in our most recent dictionaries, the Concise Oxford Dictionary (tenth edition, 2001) and the Oxford Dictionary of English (second edition, 2003).”

Contrary to Mr Austin’s argument, I do not interpret Mr Stevenson as having agreed that SPAM was a generic term. On the contrary, I understand him to be saying that SPAM retains its trade mark sense (i.e. as denoting the Claimant’s product). In the second sentence I have quoted I think that the first “when” is used in the sense of “if and when” (bearing in mind that Mr Stevenson does not hold himself out as a lexicographer).

The point that Mr Austin was seeking to make in his letter may be illustrated by reference to the New Shorter Oxford English Dictionary (4^th ed., 1993). This defines “Spam” (note the upper case S) as “n ... (Proprietary name for) a tinned meat product consisting chiefly of ham. Also loosely, any tinned luncheon meat.”This definition expressly acknowledges that “Spam” is a trade mark. The reference to it being used “loosely” to mean any tinned luncheon meat is, I believe, a reference to use by of synecdoche of the kind mentioned in paragraph 176 above. I do not interpret this entry as indicating that SPAM is a generic term for tinned luncheon meat.

For completeness, each of the three dictionaries cited in sub-paragraph 129(i) above defines “Spam” (or in one case “spam”) as a trade mark denoting a kind of tinned and/or luncheon meat. As Mr Austin noticed, the Concise Oxford English Dictionary (10^th ed. with addenda, 2001) does not refer to the “loose” usage of the term.

I therefore conclude that SPAM has not become the, or even a, common name for canned meat.

Furthermore, the Claimant has not been inactive in its policing its registration with a view to trying to stop the Claimant’s Mark from becoming generic. On the contrary, the Defendant’s own evidence shows that at least in recent years the Claimant has been active on this front.

For the reasons given above the Claimant’s claims are dismissed and the Defendant’s counterclaim is also dismissed.