“7. The applicant’s mark, SPAM, is entirely contained within, and in fact the primary element of, the mark for which a declaration of invalidity is sought. The marks are therefore partially identical, and similar as a whole. The message conveyed by the mark SPAMBUSTER, is that the public should not buy or use the applicant’s products sold under the mark and/or that it is some exhortation to do away with or destroy the applicants’ mark SPAM, or their products, altogether. 8. The services listed in the specification of the impugned UK registration are dissimilar to those for which the applicant for invalidity’s marks are registered, nevertheless, use and registration of the impugned mark is detrimental to the repute or the distinctiveness of the applicant’s earlier trade mark SPAM. Registration should therefore be declared invalid by virtue of Section 47(2)(a) of the Act (as this refers to Section 5(3) of the Act). 9. The applicants are aware of use of the word ‘spam’ on the Internet, to denote ‘rubbish’ or ‘junk’. That particular usage is not trade mark use, and neither the applicant nor anyone else can prevent it. However, the use and registration of SPAMBUSTER as a trade mark can be prevented, and that is the purpose of this application for a declaration of the invalidity.”
“2. The word SPAM has more than one meaning in the English Language. The first relates to electronic junk mail and the second almost obsolete use of the word in relation to a reprocessed food made from waste products. A copy of the online American Heritage Dictionary of the English Language (Third Edition) copyright 1992 of the definition of SPAM and BUSTER is enclosed. This copy was obtained in June 1999 demonstrating that this is not a new definition but has been in existence for some time. The applications have no rights whatsoever in the use of a trade Mark which includes English Language common names for the use of electronic mail. 3. The mark to which the applicants are complaining has been in global use since 1997 and they have not registered any objection to date. It is unreasonable and a malicious act designed to cause maximum damage to the Mark holders incurring the rightful owners to incur unnecessary costs. If the applicants own the trade mark SPAM in the defined class they also know according to their own statement para. 9 that they do not own rights in the name SPAM as applied to computer use and the action should be rejected as a malicious act designed to cause maximum damage to an established business providing services connected with electronic malicious mail. 4. A Copy of the Spambuster web site is enclosed – there is no human possibility that this web site or the use of this name can be confused with food in a different class.”
“In my opinion, the natural meaning of the word SPAMBUSTER is that a service sold under that trade mark would serve to protect the consumer from SPAM or destroy SPAM. The suggestion that anyone would want to protected from or kept away from SPAM or that it should be destroyed is of course detrimental to the trade mark SPAM.”
“In the context of computer programming it seems probable that customers would regard the mark as alluding to a possible characteristic of the services that is computer programming services to filter or eliminate unsolicited e-mail communications. Strictly the specification is, I accept, not so limited and use on a broader category of computer programming services must be borne in mind.”
“The particular type of estoppel relied upon…is estoppel per rem judicatam. This is a generic term which in modern law includes two species. The first species, which I will call ‘cause of action estoppel’ is that which prevents a party from asserting or denying, as against the other party, the existence of a particular cause of action, the non-existence or existence of which has been determined by a court of competent jurisdiction in previous litigation between the same parties. If the cause of action was determined to exist, i.e. judgment was given upon it, it is said to be merged in the judgment, or, for those who prefer Latin, transit in rem judicatam. If it was determined not to exist, the unsuccessful plaintiff can no longer assert that it does; he is estopped per rem judicatam. This simply an application of the rule of public policy expressed in the Latin maxim ‘nemo debet bis vexari pro una et eadem causa’. In this application of the maxim ‘causa’ bears its literal Latin meaning. The second species, which I will call ‘issue estoppel’ is an extension of the same rule of public policy. There are many causes of action which can only be established by proving that two or more different conditions are fulfilled. Such causes of action involve as many separate issues as there are conditions to be fulfilled by the plaintiff in order to establish his cause of action; and there are many cases where the fulfilment of an identical condition is a requirement to two or more different causes of action. If in litigation upon such cause of action any of such separate issues as to whether a particular condition has been fulfilled is determined by a court of competent jurisdiction, either upon evidence or upon admission by a party to the litigation, neither party can, in subsequent litigation between one another upon any cause of action which depends upon fulfilment of the identical condition, assert that the condition was fulfilled if the court has in the first litigation determined that it was not, or deny that it was fulfilled if the court in the first litigation determined that it was.”
“every fact which it would be necessary for the plaintiff to prove, if traversed, in order to support his right to the judgment of the court.”
“I should say that I absolutely decline to go into the question of whether Paget’s and Laurent’s invention was an anticipation of Sir William Thomson’s. Whether those or either of them could have been effectually used against the maintenance of Sir William Thomson’s patent originally I decline to say. I decline even to discuss it because it would seem to me that nothing would be of worse example and more calculated to throw the law into confusion than that a person should be permitted to submit to a decree for an injunction when he is accused of infringement, and then indirectly (of course he could not do it directly, but apparently for a collateral purpose) to insist on arguments which, if well founded at all (I do not say they are), ought to have been urged, and successfully urged, at the time when he was in litigation with the Patentee, to show that the patent against which he was contending was of itself an invalid patent.”
“But a further point is now taken on behalf of the Defendants. It is said that they are entitled, in this action, to re-try the question of validity of the patent because they say they have discovered fresh material for impeachment - fresh alleged anticipations - and are entitled to have the issue of validity re-tried as to this fresh material on the footing material. In my opinion, they are not so entitled. If they were held to be so entitled, I do not see how there could be finality upon a question of this kind as between parties such as these. According to this contention a Defendant might fight his case piece-meal. He might raise such objections to the validity of the patent as thought convenient, and when he was defeated On those, might raise other points at his pleasure, and might in that way, try the case of validity of a patent piece-meal; and, so far as I can see, extend it over as long a period as he chose. In my opinion, a Defendant is not entitled to do that. When question of the validity of a patent is brought to trial, by reason of the Defendant challenging the question of validity, he is bound to put his whole case before Court, and if he does not do so it is his fault or misfortune. He cannot be allowed to put a part of his case, or to put his case in an incomplete manner. He is bound then, when that question is raised, to search and to find out all that he intends to rely upon in support of his contention that the patent is invalid. For these reasons, it appears to me, that the Defendants are not entitled to have this question of validity re-tried because, as they say, they have found further material which would have assisted them if they had known of that material on the first trial — on the trial of the issue in that action. It appears to me that the Plaintiffs are right in their contention, and that, as between these parties, the Plaintiffs are entitled to say that this patent has been upheld, and is a good patent.”
“The Plaintiff obtained judgment in an action for the infringement of a Patent, and consequently upon that judgment there was an inquiry ordered as to the amount of damages sustained. The judgment so obtained by the Plaintiff is a judgment which made the matter of the infringement and the validity of the Patent res judicata as between these parties and created a perfect estoppel.”
“I am of the same opinion. The judgment obtained by the Plaintiff against the Defendant settled for ever, as res judicata between these parties, that this Patent is valid and that it was, infringed during the period that it was valid. So far as those issues are concerned the cause was terminated...”
“I am not so clear upon this question, I confess, as my learned brothers are, but I can see a reason for answering the question in the same direction, and my reasons for concurring in the judgment are these. The judgment in the infringement action was of course a complete judgment inter partes. It contained a certain subsidiary Order -an Order for inquiry as to damages. That Order was a complete judgment inter partes, and it was an Order made upon a certain basis — namely, upon the basis, as established at that date, that the Patent was valid. You may express it thus, that there was a complete judgment inter partes to ascertain what damage the Plaintiff had sustained upon the footing that his Patent was valid. That being inter partes, res judicata cannot be affected by the fact that subsequently, upon a petition for revocation, the Patent was held to be invalid.”
“In my view, the judge has misdirected himself in several respects in that judgment. First, if he is right that the new evidence could, with reasonable diligence have been acquired, it is not correct to say that there is no obstacle to the defendants raising that evidence in fresh proceedings for revocation of the registration. The well-established rules as to estoppel by res judicata, and in particular the rule that a party cannot bring a fresh cause of action to raise substantially the same issue as in his previous litigation, would necessarily in those circumstances preclude any further action being brought: see Henderson v Henderson 3 Hare 100 and Yat Tung Co Ltd v Dao Heng Bank Ltd[1975] AC 581 .”
“I believe that there can be no doubt as to what was the cause of action raised by the defendants in their counterclaims in the 1992 actions. There, the only allegation was that the patent was invalid for the reasons set out in the particulars of objections. Thus the decision of the court that was sought was that the patent was invalid. That was decided in the plaintiffs’ favour, with the exceptions to which I have referred. That is the matter which the defendants now wish to relitigate. I believe that they are precluded from so doing. The validity of the patent as decided is res judicata between the parties.”
“The basic principles with which we are concerned are, for the purposes of resolving this application, in my view, straightforward and they are based, in essence, on preventing what may fairly be regarded as an abuse of the court’s process. There are, I think, two fundamental rules. One is that once a matter has been the subject of a final judicial decision it cannot ordinarily be re-litigated. This rule rests on the principle that it is not in the interests of the parties, or in the public interest, that the same point should be re-litigated over and over again. The second relevant rule is, as I should think, that it is the duty of parties to any action, be they plaintiffs or defendants, to bring forward their whole case when the matter is before the court. If a party is reasonably ignorant of matters which found a claim or a defence, then that may provide an exception to the general rule in some circumstances. If a party is, for any reason, unable to present its whole case then there are well-known procedures available. The most obvious is to ask for an adjournment, but alternative course open are to ask the Judge in the first instance to try a preliminary issue which, if resolved one way, may suffice to dispose of the case or to hear such issues as can be fairly tried and to reserve the remaining issues for later decision. What, in my understanding, is not permissible is for a party with more than one cause of action or more than one ground of defence to advance one of them and then keep the others in reserve for a rainy day. That seems to me to be in effect what the defendants are seeking to do here. [He then summarised the circumstances of the case and continued:] In those circumstances it would, in my judgment, be the most obvious abuse of process to allow a defence to be raised which could, and in my judgment, plainly should have been raised then. I find myself in complete agreement with the third reason on which the learned Judge based himself. That does not mean that I disagree with his first two reasons, but simply that his third reason seems to me adequate to dispose of this application and indeed to be unassailable.”
“For my part I am content to approach this case as one of issue estoppel... This was an issue specifically raised in the first two actions. Further experiments were material which could have been adduced in those first two actions, but which by the decision of the defendants, were not so adduced. In those circumstances, in my judgment, the Judge was plainly right that the defendants in the present proceedings are estopped from raising the matter or, alternatively, and perhaps more accurately, that to allow the defendants to raise the Ross River virus matter again, would amount to an abuse of the court’s process.”
“...the final decision in the earlier proceedings established, in a way which the defendant could not be allowed to challenge in subsequent proceedings, the fact of infringement of a valid patent...”
“In trying this question, I believe I state the rule of the court correctly, when I say, that where a given matter becomes the subject of litigation in, and of adjudication by, a court of competent jurisdiction, the court requires the parties to that litigation to bring forward their whole case, and will not (except under special circumstances) permit the same parties to open the same subject of litigation in respect of matter which might have been brought forward as part of the subject in contest, but which was not brought forward, only because they have, from negligence, inadvertence, or even accident, omitted part of their case. The plea of res judicata applies, except in special cases, not only to points upon which the court was actually required by the parties to form an opinion and pronounce a judgment, but to every point which properly belonged to the subject of litigation, and which the parties, exercising reasonable diligence, might have brought forward at that time.”
“…the whole of the case made by this bill might have been adjudicated upon in the suit in Newfoundland, for it was the very substance of the case there, and prima facie, therefore, the whole is settled.”
“The decree was to compute what was due to the plaintiffs for principal and interest; that is, upon all the accounts in question in the pleadings, including the partnership and private accounts.”
“But Henderson v Henderson abuse of process, as now understood, although separate and distinct from cause of action estoppel and issue estoppel, has much in common with them. The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. As one cannot comprehensively list all possible forms of abuse, so one cannot formulate any hard and fast rule to determine whether, on given facts, abuse is to be found or not. Thus while I would accept that lack of funds would not ordinarily excuse a failure to raise in earlier proceedings an issue which could and should have been raised then, I would not regard it as necessarily irrelevant, particularly if it appears that the lack of funds has been caused by the party against whom it is sought to claim. While the result may often be the same, it is in my view preferable to ask whether in all the circumstances a party’s conduct is an abuse than to ask whether the conduct is an abuse and then, if it is, to ask whether the abuse is excused or justified by special circumstances. Properly applied, and whatever the legitimacy of its descent, the rule has in my view a valuable part to play in protecting the interests of justice.”
“29. Article 7(1)(c) of Regulation No 40/94 provides that trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of the goods or of rendering of the service, or other characteristics of the goods or service are not to be registered. 30. Accordingly, signs and indications which may serve in trade to designate the characteristics of the goods or service in respect of which registration is sought are, by virtue of Regulation No 40/94, deemed incapable, by their very nature, of fulfilling the indication-of-origin function of the trade mark, without prejudice to the possibility of their acquiring distinctive character through use under Article 7(3) of Regulation No 40/94. 31. By prohibiting the registration as Community trade marks of such signs and indications, Article 7(1)(c) of Regulation No 40/94 pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all. That provision accordingly prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks (see, inter alia, in relation to the identical provisions of Article 3(1)(c) of First Council Directive 89/104/EEC of21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), Windsurfing Chiemsee, paragraph 25, and Joined Cases C-53/01 to C-55/01 Linde and Others [2003] ECR 1-3161, paragraph 73). 32. In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provisions itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned.”
“57. It is irrelevant whether there are other, more usual signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark concerned consists. Although Art. 3(1)(c) of the Directive provides that, if the ground of refusal set out there is to apply, the mark must consist exclusively of signs or indications which may serve to designate characteristics of the goods or services concerned, it does not require that those signs or indications should be the only way of designating such characteristics. … 97. It is not necessary that the signs and indications composing the mark that are referred to in Art. 3(1)(c) of the Directive actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of the provision itself indicates, that those signs and indications could be used for such purposes. A word must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned (see to that effect, in relation to the identical provisions of Art. 7(1)(c) of [the Regulation] Case C-19l/01P OHIM v Wrigley [2003] ECR 1-0000, para. [32].)”
“ball-buster, chart-buster, crime-buster, dam buster, etc.”
“30. The Court notes first of all that the word ‘electronica’, as it appears in the trade mark application, is written in helvetica script. 31. However, using that script does not add any figurative or other feature capable of distinguishing the word ‘electronica’, having regard, inter alia, to its functional use as a simple word mark. Furthermore, in the application form, the applicant, faced with a choice between the designations ‘word mark’, ‘figurative mark’, ‘three-dimensional’ and ‘other’, chose the latter, specifying ‘script’ (‘Schriftzug’). 32. The trade mark ‘electronica’ must therefore not be regarded as figurative in any way but as a simple word mark. 33. Secondly, it must be determined whether the mark has distinctive character or is purely descriptive.”
“62. The signs in issue look and sound like the opening words of an emphatic statement relating to cycling. The ellipsis visibly (and when represented audibly by a pause) invites people to add meaning to the words. … 64. … The expression ‘cycling is’ cannot be described as a syntactical unusual juxtaposition of words in the nature of a lexical invention. The combination of words does not lack descriptive power, but the description is incomplete. And then there are the presentational elements of the signs to be taken into account. 65. I do not think that the signs as a whole are caught by the exclusion from registration contained in Article 3(l)(c)/section 3(l)(c) because I do not think that they can be said to consist ‘exclusively’ (i.e. simply and solely, as contemplated by the ECJ in BABY-DRY) of matter that is descriptive, of the kind or characteristics of the goods and services for which registration has been requested.”
“98. As a general rule, a mere combination of elements, each of which is descriptive of characteristics of the goods or services in respect of which registration is sought, itself remains descriptive of those characteristics for the purposes of Art. 3(1)(c) of the Directive. Merely bring those elements together without introducing any unusual variations, in particular as to syntax or meaning, cannot result in anything other than a mark consisting exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services concerned. 99. However, such a combination may not be descriptive within the meaning of Art. 3(l)(c) of the Directive, provided that it creates an impression which is sufficiently far removed from that produced by the simply combination of those elements. In the case of a word mark, which is intended to be heard as much as to be read, that condition must be satisfied as regards both the aural and the visual impression produced by the mark.”
“We do sometimes show words which are trademarks with a lower case initial (examples are biro, cashpoint), but only where we have ample evidence that this form is in widespread or dominant use. Trademarked terms tend to be included in our dictionaries when they start to be used generically, i.e. when people say spam when they mean any similar cold meat, not necessarily spam itself. We acknowledge in our dictionaries that the meat sense is a trademark. The word itself, when used in other senses, cannot be trademarked. The meat sense of spam is still shown first in our most recent dictionaries, the Concise Oxford Dictionary (tenth edition, 2001) and the Oxford Dictionary of English (second edition, 2003).”