Hormel Foods Corporation v Antilles Landscape Investments NV

A registered trade mark should be challenged on all grounds properly belonging to the validity dispute. An unsuccessful challenge in Registry proceedings may found cause of action estoppel even where later grounds differ. Revocation is conceptually distinct from invalidity, but a later claim may still be an abuse if it could and should have been brought earlier. The abuse inquiry is broad and merits-based. A stylised presentation of a descriptive word remains exclusively descriptive where the visual features merely represent the word; additional device matter may produce a different result. For revocation, a mark need only have become a common name, not the only common name, and proprietor inactivity need only be one cause of that result.

Hormel Foods Corporation sought declarations that the defendant’s SPAMBUSTER mark was invalid or should be revoked. The defendant counterclaimed that Hormel’s SPAM mark was invalid or revocable.

Hormel had previously challenged the SPAMBUSTER registration in Registry proceedings. The Registrar dismissed that challenge in BL O/048/02, and Hormel did not appeal. The central questions were whether the present invalidity and revocation claims were barred by cause of action estoppel or constituted an abuse of process, and, if not, whether the marks were invalid, descriptive, generic or common names under the Trade Marks Act 1994.

1. The claims and counterclaim were dismissed. The claimant’s later invalidity claims were barred by cause of action estoppel. The revocation claim was not barred by cause of action estoppel because invalidity concerns whether registration was defective from the outset, whereas revocation concerns later events. Nevertheless, all the claims were abusive.

2. A decision of the Registrar was capable of founding res judicata. The authorities concerning patents and registered designs established that a party attacking validity must bring forward its full case. An unsuccessful attack creates an estoppel against a later validity challenge on the same or different grounds. The court applied that principle to trade marks.

3. The wider principle in Henderson v Henderson (1843) 3 Hare 100, as explained in Johnson v Gore Wood & Co [2002] 2 AC 1, requires a broad, merits-based assessment. The fact that a matter could have been raised earlier is not automatically decisive. The question is whether, in all the circumstances, the later proceedings misuse the court’s process. Here the evidence and factual background substantially overlapped, the present claims could and should have been included in the Registry proceedings, and there had been no material change of circumstances. The principle could be relied on as a substantive defence.

4. In the alternative, the judge held that SPAMBUSTER was descriptive for anti-spam computer programming services because at least one possible meaning designated a characteristic of those services. Fancy lettering and colour merely represented the descriptive word and added nothing. A device containing additional matter could be different. The mark was also devoid of distinctive character under section 3(1)(b), while the section 3(1)(d) objection was not established because the word was not customary in common use at the relevant date.

5. The mark had not acquired distinctive character. The relevant question was whether a significant proportion of the relevant class perceived it as distinguishing one undertaking’s services. Cablenet’s approximately 3,000 subscribers were only a small proportion of that class.

6. The judge further held that SPAMBUSTER had become a common name in the trade by 25 April 2003. It did not have to be the only common name, and the proprietor’s inactivity needed to be a cause, rather than the sole cause, of that result. The date of revocation could not be placed earlier. Hormel’s SPAM mark remained distinctive: occasional synecdochic use did not establish genericness, and the evidence showed active policing.

The judgment is a first-instance decision. It records earlier Registry proceedings in which the Registrar dismissed Hormel’s challenge to the SPAMBUSTER registration in BL O/048/02; that decision was not appealed. It also records a separate defamation claim that was settled. No appellate history of the present proceedings is stated.