Wood Trade Marks and Design Limited

For many years, advisors have said that trade mark cases before the UK trade mark office (UKIPO) are cheap alternatives to “proper” cases at the High Court.  The costs are generally much less, and the typical costs (i.e. what you have to pay the other side on top of any legal costs you have already spent) if you lose are about £2-3000; this is not cheap, but it is much cheaper than High Court proceedings, where the legal costs can easily reach ten times that amount.

Over the last few years, however, there has been a slow movement to recognise that proceedings before the UKIPO should be binding on the parties where they are not appealed.  This is essentially what happened in the case of Evans and Evans T/A Firecraft v. Focal Point Fires Plc (http://tinyurl.com/ykael5l).  Focal Point had a registration for the mark FIRECRAFT.  Firecraft applied to have the registration cancelled on the basis that they had acquired unregistered (“passing-off”) rights in the mark FIRECRAFT prior to Focal’s application.  They were successful.

Firecraft then brought a case before the High Court for passing-off and asked for summary judgment on the basis that Focal could not defend the case.  The court agreed, finding that the decision of the UKIPO could not be challenged and that as a result Focal could not argue that their use did not pass themselves off as Firecraft’s business.

This case underlines how very important it is that cases before the UK registry are handled properly – just because they are often less expensive, and just because it can be easier to prove a case than before the High Court does not mean that you can make less effort – the case may have very important consequences.  It may also provide a small company with the means to bring a case much more cost effectively than before the High Court.