The basis of the judge's decision was that the issue of passing off had already been determined in the Trade Marks Registry of the IP Office by the hearing officer, Mr. James, on behalf of the Registrar in invalidation proceedings. By his decision of 18 Nov 2008 Mr. James declared the registration invalid under s.47 (2) (b) of the Trade Marks Act 1994 on the ground that the claimants had an "earlier right" within the meaning of s.5 (4) (a) of the Act. That sub-section provides:
"A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented-(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade,"
Even though, as Mr. Geoffrey Hobbs QC observed in WILD CHILD  RPC 455, an invalidity hearing in the Registry is very different from a passing off trial in the High Court in that such hearings tend to last only a couple of hours and evidence is rarely tested by cross-examination, and despite the judgment of the Court of Appeal in Special Effects Ltd v L'Oreal SA and Another  ETMR 51,  EWCA Civ 1,  Bus LR 759,  RPC 15 that opposition proceedings are not res judicata the judge held that the defendant had no real prospect of success in defending the passing off action.
As the IPO observed in its latest Tribunal Practice Note TPN 6/2009 Mr. Justice Peter Smith's decision has "ramifications" and "significant consequences". Accordingly all invalidation proceedings under s.5 (1), (2), (3) and (4) will require a hearing ("yea") and require the attendance of the parties or their legal representatives ("whoopee")!