Thomas v Luv One Luv All Promotions Ltd & Anor

Final invalidation proceedings before the UKIPO may give rise to issue estoppel where the relevant issues were fully litigated, finally determined and not appealed. Opposition proceedings generally do not give rise to cause of action estoppel because the opponent has no cause of action at that stage. Cause of action estoppel and issue estoppel remain distinct, although both are qualified by the wider law against abusive relitigation. A party cannot normally raise in later proceedings a defence that was available and should have been raised earlier, absent special circumstances causing injustice. Where an earlier decision finally determined that a party did not own goodwill and was not entitled to use a sign, those findings may bind later proceedings. Summary judgment is appropriate where there is no real prospect of success and no compelling reason for trial.

The claimant brought passing-off proceedings concerning the use of the names LOVE INJECTION and LUV INJECTION by his half-brother and a promotion company controlled by him. Earlier UKIPO opposition and invalidation proceedings had resulted in findings that the relevant group operated as a partnership at will, that the goodwill was held by the partnership, and that the second defendant’s trade mark applications and registration were made in bad faith.

The claimant applied to strike out the defence and counterclaim on the grounds of cause of action estoppel, issue estoppel and abuse of process. Alternatively, he sought summary judgment on aspects of the defence and cancellation of a further trade mark registration. The central issues were whether the earlier UKIPO decision bound the parties and whether the defendants could raise new arguments concerning coexistence and the changed significance of the name.

1. Earlier UKIPO proceedings. The opposition proceedings did not create cause of action estoppel. Applying Special Effects Ltd v L’Oréal SA [2007] EWCA Civ 1, opposing registration did not involve a cause of action properly so called. The invalidation proceedings were different because they were final proceedings capable in principle of giving rise to issue estoppel.
2. Issue estoppel and abuse of process. The findings in the invalidation proceedings were fully litigated before a competent tribunal, after oral evidence and cross-examination, and were not appealed. The parties were therefore estopped from denying the relevant findings. This conclusion was reinforced by the need for finality and by the fact that the second defendant continued to assert ownership of goodwill contrary to the decision and had not paid the costs ordered by the UKIPO.
3. The estoppel extended to the findings that the group had operated as a partnership at will and that the goodwill belonged to the partnership. It did not determine ownership of the goodwill after the 2016 split, nor whether either party’s post-split group was a continuation of the original group. Those matters remained for trial. The court also rejected the defendants’ submission that the claimant could not sue because the goodwill had belonged to the partnership.
4. The proposed coexistence defence, based on the name no longer indicating a single source, was available to the second defendant in the UKIPO proceedings and should have been raised there. No special circumstances made its exclusion unjust. The later defence and counterclaim were therefore abusive to the extent identified in the order.
5. Under CPR 24.2, summary judgment was appropriate where the defendants had no real prospect of defending the cancellation claim or disputing that use of the relevant signs constituted a misrepresentation. The defence was struck out in the specified respects, summary judgment was given on the identified misrepresentation issue, and the second defendant’s registration was ordered to be cancelled. The claims concerning the dub plates and winding up of the partnership continued to trial.

First-instance decision. The judgment determined an application in ongoing High Court passing-off proceedings arising after earlier UKIPO opposition and invalidation proceedings.