The decision in the 2006 case involving L’Oréal, in which the cosmetics giant was rebuffed in its attempt to prevent a smaller producer, called Special Effects, bringing to the market products which could be confused with its own ‘Special FX’ range, has been reversed.
Special Effects had been granted a trade mark, despite the opposition of L’Oréal, over the name ‘Special Effects’. This occurred very shortly before L’Oréal launched its Special FX beauty products range. Special Effects went to court alleging trade mark infringement. When L’Oréal attempted to defend the claim, disputing the validity of the trade mark, the High Court ruled that the matter had been heard by the Trade Mark Registry and therefore the arguments could not be reheard by the Court. L’Oréal appealed.
The Court of Appeal judged that arguments already heard by the Trade Mark Registry can, in certain circumstances, be re-argued in court. The opposition proceedings offered by the Trade Mark Registry do not have the finality of a decision of the court.
