Ch D: Mr Richard Arnold QC, sitting as a deputy High Court judge: 24 January 2005

The law in relation to cause of action estoppel as developed in patents and registered designs cases applied to trade mark cases, so that (i) a person who attacked the validity of a trade mark was under a duty to put his full case in support of that attack at trial; and (ii) if he were unsuccessful, he would be barred by cause of action estoppel from attacking the validity of that trade mark in subsequent proceedings whether or not on the same or different grounds.

Such an estoppel did not however extend to bar a claim for revocation of that mark.

Mr Richard Arnold QC, sitting as a deputy judge of the Chancery Division, so held when dismissing the claim of the claimant, Hormel Foods Corpn, for a declaration that the registration of a trade mark owned by the defendant, Antilles Landscape Investments NV, was invalid, or for an order that the mark be revoked; and dismissing the defendant’s counterclaim for a declaration that the claimant’s trade mark was invalidly registered or should be revoked.

The Registrar of Trade Marks had previously dismissed an application by the claimant, the proprietor of the registered trade mark “SPAM” in relation to canned meats, for a declaration that the registration of the defendant’s mark, “SPAMBUSTER”, in relation to computer programs, was invalid.

MR RICHARD ARNOLD QC said, that, in the instant case, the claimant was barred by cause of action estoppel from attacking the validity of the defendant’s mark after having unsuccessfully attacked the validity of the same mark in the registry proceedings, notwithstanding that it now relied upon different grounds.

However, that cause of action estoppel did not extend to the claimant’s claim for revocation of the defendant’s mark. A claim for revocation of a trade mark, which concerned events occurring subsequent to registration, was fundamentally different from a claim that the mark was invalidly registered, which concerned the position as at the application date.

That distinction between initial validity and subsequent revocation was not one which applied to either patents or registered designs. It might cause serious problems if an unsuccessful attack on the validity of a registration were held to be an absolute bar to a later claim for revocation. However, the claimant’s claims, including the claim for revocation, constituted an abuse of process.

The principle of abuse of process as advanced in Henderson v Henderson (1843) 3 Hare 100 could be relied upon as a substantive defence as well as a ground for striking out a claim.