Slater & Ors v Anglo Atlantic Media Ltd

A statement of case must plead concise, material facts supporting an identifiable cause of action and remedy. Pleadings directed at statements or documents produced in judicial or quasi-judicial proceedings are generally protected by absolute privilege. A subsequent claim cannot be used as a collateral attack on a final decision of a competent tribunal where the same issues and evidence were determined. A Registrar’s substantive invalidity decision may found issue estoppel. Claims based on silence must identify an actionable representation, inducement and loss. A trade mark infringement claim cannot succeed where the registration has been cancelled and the claimant has no proprietary right in the mark.

The applicants were members or representatives of the Bonzo Dog Doo-Dah Band. The respondent had registered a trade mark incorporating the Band’s name and brought two High Court claims after the applicants challenged that registration before the Intellectual Property Office.

The Registrar found that the mark had been registered in bad faith and invalidly under sections 5(4)(a) and 3(6) of the Trade Marks Act 1994. The respondent’s claims alleged conspiracy, malicious falsehood, statutory misrepresentation and trade mark infringement. The applicants applied to strike out both statements of case under CPR r 3.4(2).

1. The claims were struck out. The pleadings were incomplete and prolix, contained irrelevant matters, failed to identify sustainable causes of action, and were totally without merit.
2. Under CPR r 3.4(2), read with the overriding objective in CPR 1, statements of case must identify the material facts supporting the cause of action and the remedy sought. They must not be used to obtain disclosure or pursue matters unrelated to the pleaded relief. The principles stated in Tchenguiz v Grant Thornton [2015] EWHC 405 (Comm) and Charter UK Ltd v Nationwide Building Society [2009] EWHC 1002 (TCC) were applied.
3. The conspiracy and malicious-falsehood claims were based substantially on statements and documents produced in the IPO proceedings. Those matters attracted absolute privilege. The claims also amounted to collateral attacks on the Registrar’s decision and lacked adequate pleading of intention, publication, damage and causation.
4. The Registrar had acted judicially, not administratively. The invalidity proceedings involved a substantive dispute between the parties, procedural hearings, evidence and findings on passing off, goodwill, partnership and bad faith. The decision was therefore a decision of a competent tribunal capable of founding issue estoppel. The reasoning in Hormel Foods Corporation v Antilles Landscape Investments NV [2005] EWHC 13 (Ch), Special Effects v L’Oréal SA [2007] R.P.C. 15, Evans v Focal Point Fires plc [2009] EWHC 2784 and Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] 4 All ER 715 was considered.
5. The statutory misrepresentation claim under section 2(1) of the Misrepresentation Act 1967 failed to identify the representation, the contract, inducement or resulting loss. In any event, the alleged misrepresentation was silence, and no applicable exception to the general rule against liability for non-disclosure was pleaded.
6. The trade mark infringement claim was incapable of success because the Registrar had cancelled the respondent’s mark and found that the respondent had no proprietary right in it. The IVA-related claim was also struck out because any cause of action was not vested in the respondent, and the correspondence was privileged.

Not an appeal. The judgment determined an application to strike out two High Court statements of case following substantive invalidity proceedings before the Intellectual Property Office.