Special Effects Overturned: No Estoppel From Opposition Procedures

Today, in the eagerly anticipated judgment in Special Effects v L'Oreal the Court of Appeal has reversed a controversial decision reached by the High Court that a party who had raised certain arguments in an opposition to the grant of a trade mark in the Trade Mark Registry would be prevented from raising the same arguments when later disputing the validity of the trade mark. In a significant and welcome ruling, the Court of Appeal decided that the right to contest the validity of a trade mark in accordance with s47 of the Trade Marks Act 1994 (the Act), be it at the Registry or in Court, would not be denied, just because the mark had been opposed pre-grant, as the Registry' s decision to register a trade mark 'is not a final decision'. The right to challenge a trade mark post-grant is expressly provided for in the Act and should not be hindered by issue estoppel, cause of action estoppel or abuse of process arguments.