Spambusters Can't Bust Spam

LexisNexis' All England Direct subscription-only service brings tidings of Hormel Foods Corporation 5 Antilles Landscape Investments NV, yesterday's Chancery Division conclusion of Richard Arnold QC, sitting every bit a deputy guess of the High Court.

Hormel sold canned luncheon meat sold nether the merchandise score SPAM. Antilles owned a figurative merchandise score for the give-and-take SPAMBUSTER. After it unsuccessfully applied to the Trade Mark Registry for a annunciation that the SPAMBUSTERS score was invalid, Hormel went to courtroom too sought (i) declarations that the score had been registered inwards contravention of department 3(1)(b) or (c) of the Trade Marks Act 1994 or (ii) revocation of SPAMBUSTERS nether department 46(1)(c) on the Earth that it was descriptive, generic or devoid of distinctive character. Antilles counterclaimed, contending that (i) SPAM was registered inwards contravention of sec 3(1)(d) of the Act since it was a term used inwards merchandise nether department 47(1) or that (ii) it should last revoked nether department 46(1)(c). Antilles too complained that Hormel's proceedings were oppressive too vexatious too that Hormel sought to ignore the adverse ruling made against it inwards the Registry proceedings.

Richard Arnold QC ruled both that Hormel was barred from attacking the validity of the defendant’s score too that Antilles' counterclaim would last dismissed. In particular:

* H5N1 somebody who attacks the validity of a patent or registered blueprint is obliged to pose his sum representative inwards back upward of that laid on at trial. If he is unsuccessful, he is barred past times "cause of action" estoppel from attacking the validity of that correct inwards subsequent proceedings -- whether on the same or unlike grounds. In principle, at that spot is no argue why the same police line on drive of activeness estoppel should non apply to merchandise marks every bit well.

A spokesman for Antilles Landscape Investments NV gives his frank opinion

* Since Hormel was attacking the validity of SPAMBUSTERS in ane lawsuit to a greater extent than afterwards having unsuccessfully attacked the validity of that score inwards the Registry, it was barred from too thus doing past times drive of activeness estoppel.

* Hormel's claims were an abuse of procedure which extended to the claim for revocation every bit good every bit to the claims for a annunciation of invalidity, since they should select been included inwards the Registry proceedings. Having failed inwards the Registry proceedings, it was oppressive for Hormel to heighten them now.

* Hormel's SPAM score had non cash inwards one's chips a generic bring upward for canned meat. Since SPAM already possessed a distinctive grapheme when the application to register it was made, Antilles' counterclaim for a annunciation of revocation too invalidity failed.

is surprised that the estoppel lawsuit hasn't already been litigated too that the guess had to "borrow" precedents from patent too blueprint law, given the persistence of merchandise score owners inwards pursuing litigation. Merpel adds, if yous cash inwards one's chips to the Hormel website too fundamental 'python' into the search box, yous larn the message "sorry, no recipe was found".

Monty Python Spam sketch here
SPAM Museum here