The Edge Interactive Media Inc & Anor v Future Publishing Ltd

A determination by a UK IPO hearing officer may create cause of action estoppel and issue estoppel where the hearing officer is acting as a court of competent jurisdiction. A determination is not obiter merely because an appellate decision declines to reconsider it. The relevant question is whether the determination was necessary to resolve the application before the original decision-maker. An appellate decision which leaves that determination undisturbed does not deprive it of its effect, particularly where the scope of the appeal was shaped by the appellant’s own case.

The claimants appealed from part of an order made by Master Clark on 23 May 2017. The Master had struck out their claim for declaratory relief concerning the subsistence and exercise of a power of attorney contained in a 2004 concurrent trading agreement.

The power of attorney had been relied upon in an application to the UK Intellectual Property Office to record assignments of trade marks. A hearing officer refused the application, finding that no valid pre-termination assignment had occurred and that the power of attorney could not be used after termination of the agreement. On appeal, the Appointed Person upheld the refusal but declined to determine the latter issue, describing it as not clear cut.

The central issue was whether the hearing officer’s determination concerning the continued effectiveness of the power of attorney was necessary, or merely obiter and hypothetical, so as to support cause of action estoppel and issue estoppel.

1. The appeal was dismissed. The claimants had not shown that the Master was wrong to strike out the declaratory relief claim. The costs were summarily assessed at £22,674, payable within 14 days.
2. The hearing officer had two deeds of assignment before him and determined their validity. The first deed was rejected because the evidence supporting it was false. The second deed, dated July 2012, depended on whether the power of attorney survived termination of the concurrent trading agreement.
3. The hearing officer expressly decided that the power of attorney did not continue after termination. That issue was necessary to determine the validity of the second deed and therefore to dispose of the recordal application. The determination was neither obiter nor hypothetical.
4. The court rejected the submission that only the original TM16 application was before the hearing officer. The documents relied upon by the claimants, including the amended TM16 and the second deed, had been put before him and were dealt with in his decision. The claimants’ later attempt to adopt a contrary procedural characterisation was regarded as opportunistic.
5. The Appointed Person’s decision did not alter that conclusion. His decision not to determine the power of attorney issue was conditioned by the way the appeal had been conducted. It left the hearing officer’s determination undisturbed and did not affect the necessity of that determination in the original proceedings.
6. Accordingly, the hearing officer’s determination created cause of action estoppel and issue estoppel in the circumstances identified by the Master. The claimants had identified no compelling reason for a trial.

• High Court (Chancery Division): The appeal from Master Clark’s order dated 23 May 2017 was dismissed. The Master’s judgment had been handed down on 9 May 2017.
• UK Intellectual Property Office: A hearing officer refused the application to record the assignments and determined that the power of attorney did not survive termination of the agreement.
• Appeal to the Appointed Person: The appeal was dismissed on 28 May 2014. The Appointed Person upheld the first ground of refusal and declined to determine the power of attorney issue.