Opposition in UK Law

It seems to us that the co-existence of the provisions for opposition and for a declaration of invalidity has the result that opposition proceedings are inherently not final. They exist at the first stage of the process, before registration.

It seems to us that it is also relevant to consider what is at stake at each stage. In opposition proceedings in the Registry, the consequence of failure for the opponent (leaving aside the abuse of process argument) is that the trade mark will be registered, though subject to the possibility of a later declaration of invalidity under section 47, at the suit either of the opponent or of some other party.

If, as we have concluded, the legislation does not preclude the same party from seeking a declaration of invalidity, having failed in an opposition, it seems to us that the circumstances would need to be unusual to justify holding that a party who did take advantage of the second opportunity provided by the legislation is abusing the process of the court.

The principle to be applied is that formulated by Sir Robert Megarry in Gleeson v Whippell and approved by the House of Lords in Johnson v Gore-Wood (see paragraph 27 above). In my view, prima facie, each company in a group is to be regarded as the privy of every other company in the group unless it demonstrates the contrary.

In practice it is the Assistant Comptroller who has special responsibility for registration of trade marks, and where an opposed application for registration becomes the subject of opposition proceedings under section 38(2) of the 1994 Act, hearings are conducted before the Assistant Comptroller or a Principal Hearing Officer (acting in either case as the authorised delegate of the Registrar).

It is not suggested that he was not experienced in this field, and there is nothing in the Civil Procedure Rules to diminish the degree of respect which has traditionally been shown to a hearing officer's specialised experience. In such circumstances an appellate court should in my view show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle.

It seems to me to be clear that if the proviso "unless intended for use in science and industry" is satisfied, then clause 4(a) ceases to have any application. Engineering can apply for what they please, provided that the specification is limited to goods for use in science and industry. The real question is whether, notwithstanding that Engineering can apply under 4(a), SA can oppose. That depends upon the construction of clause 4(c), to which I shall now turn.