Thomas v Luv One Luv All Promotions Ltd and another
| Jurisdiction | England & Wales |
| Neutral Citation | [2021] EWCA Civ 732 |
| Year | 2021 |
| Court | Court of Appeal (Civil Division) |
2021 April 29; May 20
Estoppel - Per rem judicatam - Issue estoppel - Hearing officer invalidating registration of trade mark on basis of bad faith and on basis that use of mark liable to be prevented by virtue of law of passing off - Claimant bringing claim in passing off - Claimant applying to strike out defence on basis of estoppel - Whether decision containing two rationes decidendi capable of creating issue estoppel - Whether inability to appeal against one of the rationes constituting special circumstance disapplying operation of issue estoppel -
The claimant and the second defendant were half-brothers who, along with others, were members of a musical group known as LOVE INJECTION or LUV INJECTION. Following the group’s split the claimant started to perform along with others under the name “Love Injection” and less frequently “Luv Injection”, and the second defendant started to perform under the name “Luv Injection Sound” together with some of the individuals who were involved in the group before the split, which did not include the claimant. The second defendant was also the sole shareholder and director of the first defendant company which promoted the group operated by the second defendant. In proceedings in the Intellectual Property Office the hearing officer upheld the claimant’s objections to the second defendant’s application for and registration of “LOVE INJECTION SOUND” and “LUV INJECTION SOUND” as trade marks, finding that both the application and registration were made in bad faith under section 3(6) of the Trade Marks Act 1994F1, and that the use of the marks could be restrained by the claimant by virtue of the law of passing off under section 5(4)(a) of the same Act (“the invalidity proceedings”). Articles 2 and 5 of the Trade Marks (Relative Grounds) Order 2007F2 curtailed the width of section 5(4) of the 1994 Act, restricting the raising of an objection under section 5(4), and an application for a declaration of invalidity on that ground, to the proprietor of the earlier trade mark or other earlier right. The second defendant continued to use the marks LOVE INJECTION and LUV INJECTION and consequently the claimant brought a claim in passing off. The second defendant asserted that he was the owner of the goodwill in the name, that he was entitled to continue to use it and that, on the contrary, it was the claimant who was passing off. On the claimant’s application to strike out the defence on the basis of estoppel and abuse of process, the judge held that both the claimant and the second defendant were estopped from denying the findings of the hearing officer in the invalidity proceedings, there being no special circumstances which would disapply that estoppel, and accordingly she struck out the defence.
On the defendants’ appeal—
Held, allowing the appeal, that where a decision was made on two separate grounds, each one of which formed the basis for the decision, in the present case the objection under section 5(4)(a) of the Trade Marks Act 1994, from which the defendant had no right of appeal, and the objection under section 3(6) of the same Act, it was at least doubtful whether the decision created an issue estoppel; that even if a “twin ratio” decision could create an estoppel in relation to both rationes, an inability to appeal might be one of the special factors which persuaded a court to permit a challenge to at least one of the rationes; and that in the present case the lack of any opportunity for the second defendant to mount an effective appeal against the objection based on section 5(4)(a) of the 1994 Act, inter alia, amounted to such a special circumstance which entitled the second defendant to challenge the claimant’s standing to bring proceedings for passing off otherwise than for the benefit of the partnership (post, paras 51, 75–76, 79, 80).
APPEAL from Judge Melissa Clarke sitting in the Intellectual Property Enterprise Court
By a claim form issued on 21 October 2019 the claimant, Ian Thomas, sought an injunction restraining the defendants, Luv One Luv All Promotions Ltd and Winston Thomas, from passing off directed towards the claimant whether through the use of the mark LOVE INJECTION, LUV INJECTION or otherwise (“the Name”). By a defence and counterclaim dated 4 December 2019 the defendants asserted that all goodwill in the Names belonged to the second defendant, that he was entitled to continue to use and perform under the Name and that, by trading under the Name (or similar) the claimant had passed off the claimant’s new group as or for the second defendant’s Group the goodwill in respect of which belonged to the second defendant; and sought an injunction restraining the claimant from passing off any musical group or sound as or for a group or sound of the second defendant or a group or sound authorised or approved of by the second defendant by the use of the Name or any name or name confusingly similar thereto or in any other way. By an application notice dated 28 February 2020 the claimant applied to strike out the defence on the basis of estoppel and abuse of process, and for summary judgment.
By a judgment dated 17 June 2020 Judge Melissa Clarke sitting in the Intellectual Property Enterprise Court [2020] EWHC 1565 (IPEC); [
By an appellant’s notice filed on 7 July 2020 and pursuant to permission granted by the Court of Appeal (Floyd LJ) on 17 November 2020 the defendants appealed on the grounds that (1) since the Group was a partnership at will, the goodwill in the Name belonged to the partnership and not the individual members; (2) therefore, the defendants were entitled to raise a defence to the claimant’s claim for passing off that if, contrary to the claimant’s particulars of claim and reply, the Group was a partnership and both the claimant and the defendants were bound by that conclusion, then the claimant did not own the goodwill in the Name; and (3) in all the circumstances, the second defendant was not bound by issue estoppel arising from the judge’s decision, so as to preclude him or the first defendant from raising such defence because it would result in injustice.
The facts are stated in the judgment of Lewison LJ.
Michael Hicks (instructed by
Aaron Wood (instructed by
The court took time for consideration.
20 May 2021. The following judgments were handed down.
LEWISON LJ
Introduction1 Ian Thomas and Winston Thomas are half-brothers. They have been previously designated by their various roles (Party B/Party A; claimant/first defendant; respondent/appellant) which can be confusing. I mean no disrespect, therefore, by referring to them by their given names for the sake of clarity. Between about 1986 until they split in 2016 they (and others) were members of a musical group known as LOVE INJECTION or LUV INJECTION. The group is referred to as a “sound”. The dispute between them concerns who has the right to use the name. Ian has brought a claim in passing off against Winston. In her judgment of 17 June 2020 Judge Melissa Clarke struck out most of Winston’s defence to that claim; and granted an injunction preventing Winston from using the name. Her judgment is at [2020] EWHC 1565 (IPEC); [
2 This is not the first dispute between the brothers.
3 Following the split in 2016, Ian started to perform along with others under the name “Love Injection” and less frequently “Luv Injection”. Winston started to perform under the name “Luv Injection Sound” together with some of the individuals who were involved in the group before the split. They did not include Ian. Winston is also the sole shareholder and director of a company called Luv One Luv All Promotions Ltd which promotes the group operated by Winston under the sign “Luv Injection Sound”. I do not distinguish between Winston and his company except where it is necessary to do so.
4 The first dispute between the brothers arose out of Winston’s application to register trade marks in 2017. The registrations for which he applied were “LUV INJECTION SOUND” and “LOVE INJECTION SOUND”. The first application was made in February 2017 and resulted in the grant of a trade mark in class 41 (entertainment services). The second application was made in October 2017 for registration of the same mark for classes 9 (hi-fi sound systems, music recordings) as well as class 41. The first application was granted; but Ian opposed the second application. He also sought to invalidate the first registration.
5 The proprietor of a registered trade mark has the exclusive right to that mark which is infringed if anyone uses the mark in the United Kingdom without his consent: section 9 of the Trade Marks Act 1994. That would include the use in the course of trade of a sign which is identical with or similar to the trade mark in relation to identical services (in the latter case where there exists a likelihood of confusion): section 10. If, therefore, Winston had succeeded in registering the mark and retaining the mark already registered, he would have been able to prevent Ian (and anybody else) from using the name without his consent.
6 Section 3(6) of the Trade Marks Act 1994 provides that a trade mark must not be registered if or to the extent that...
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