Decision Nº O/154/08 from Intellectual Property Office - (Trade market), 4 June 2008
| Judge | Dr L Cullen |
| Case Outcome | Section 5(2)(b): Opposition partially successful |
| Date | 04 June 2008 |
| Registration Number | UK00002226666 |
| Appellant | Omega Engineering Inc |
| Administrative Decision Number | O/154/08 |
| Court | Intellectual Property Office (United Kingdom) |
O-154-08
TRADE MARKS ACT 1994
IN THE MATTER OF
APPPLICATION NO. 2226666 TO REGISTER
IN THE NAME OF OMEGA ENGINEERING INC.
THE TRADE MARK :
OMEGA.CO.UK
AND OPPOSITION THERETO
UNDER No. 93220
BY
OMEGA SA (OMEGA AG) (OMEGA LTD)
Page 2 of 36
Trade Marks Act 1994
IN THE MATTER OF Application no. 2226666
To register the Trade Mark
OMEGA.CO.UK
in the name of OMEGA ENGINEERING Inc.,
and Opposition thereto under
no 93220
by OMEGA SA (OMEGA AG) (OMEGA LTD)
THE BACKGROUND
1. On 20 March 2000, Omega Engineering Inc of One Omega Drive, Stanford, Connecticut,
USA, hereafter referred to as Engineering, applied to register the trade mark OMEGA.CO.UK for
the following classes of goods and services:
Class 9 Testing and laboratory equipment; vibration control and motion control products and systems;
instruments for measurement and control of variable physical and electrical parameters;
regulation and control instruments for motion and vibration and for angular, linear and circular
displacement and travel; industrial and scientific equipment for measuring, controlling and/or
regulating temperature, humidity, pressure, motion, travel, strain, angular, linear and circular
displacement, force, flow, viscosity, level pH, load, vibration, electrical resistance, air velocity,
amperage, motion, movement, volume, frequency, voltage, ion concentration and conductivity;
acquisition, display and retrieval of data for all of the above; transducers; conditioners;
monitors; meters; amplifiers, power supplies; transformers; recorders; computer controlled
measuring, timing and display apparatus; clocking devices; apparatus for checking and
measuring distance; apparatus for acquiring, transmitting, managing and distributing
information and data; apparatus for measuring, calculating, processing, pointing, memorising,
displaying, transmitting and recording data relating to physical and electrical parameters;
equipment for signalling and displaying data for use in the laboratory or in industrial plant or
for scientific or industrial purposes; computer controlled apparatus for checking and controlling
the measurement of distance; electronic information and Page 2 data display apparatus for use
in the laboratory or in industrial plant or for scientific or industrial purposes; measuring, timing
and display apparatus for use in the laboratory or in industrial plant or for scientific or industrial
purposes; measuring and control apparatus for physical and electrical parameters including:
circular, linear and angular displacement, circular, linear and angular travel, circular, linear and
angular motion, circular, linear and angular movement, volumetric displacement, liquid level,
flow, vibration and motion control; computer controlled apparatus for all of the above; fiber
optics, temperature control and measurement goods; optics, namely lenses and diffractive optics
for laser beams; radiometers, laser diode devices and systems; light emitting diode illuminating
systems; computer software for measurement of variable physical and electrical parameters;
temperature reference sources; thermocouples; thermistors; computer software for testing the
performance, accuracy and calibration of instruments; magnetic data carriers, optoelectronic
components; fiber optic components; optical hardware; optics; vibration control products;
motion control products and systems; metrology systems; test systems and instruments; lens
mounts; laser diodes, beamsplitters, motion controllers; laser beam expanders; fiber optic
infrared couplers; infrared sensors; laser diode temperature detectors; energy detectors; optical
detectors, infrared detectors; hand held infrared detectors; power meters; laser light sources;
Page 3 of 36
temperature controllers; analysers, viscosity and flow testers; rotameters; flow meters; all for
science and/or industry.
Class 14 Chronometric and horological products for science and industry; industrial and scientific timers;
period timers; timers used in industrial and/or scientific apparatus to measure and/or control
other variable parameters; all the afore going being for science and/or industry.
Class 16 Printed matter; stationery; instructional and teaching material; catalogues, technical and
scientific handbooks, textbooks and technical reference books about measurement, control and
regulation of variable parameters in scientific, laboratory and industrial operations and research;
all the afore going goods being for science and/or industry; but not including printed publicity
material for use by retail outlets.
Class 35 The bringing together, for the benefit of others, of a variety of goods, enabling customers to
conveniently view and purchase those goods from a scientific and industrial goods catalogue by
mail order or by telecommunications or from an Internet web site specialising in the marketing
of electronic and photonic goods for industrial use.
Class 37 Repairs, installation service, and technical consultation and assistance in the fields of
measuring, controlling and/or regulating industrial and laboratory variable parameters; technical
consultation and assistance in industrial and laboratory process measurement and control data
acquisition, display and retrieval; technical consultation services; instrument testing and
technical support services, namely troubleshooting of instrument problems in person and via
fax, computer and telephone; instrument calibration, field services, maintenance contracts,
equipment installation and testing; on customer training; system upgrades; telephone and on
technical support and assistance; instrument maintenance; all being for science and/or industry.
Class 40 Creation of designs and models for science and industry; engineering design services for others
in the field of measurement and control; custom manufacturing of instruments for measurement
and control of variable physical and electrical parameters to the order and specification of
others; all the afore going services for science and/or industry.
Class 41 Education; providing of training, namely teaching and training in the use and operation of
instruments and systems; training provided by telephone and on-site, all relating to
measurement and control; all the afore going services being for science and/or industry.
The application was published for opposition purposes on 26 November 2004.
2. On 22 February 2005, Omega SA of Jakob-Stampfli-Strasse 96, Bien, Switzerland, hereafter
referred to as Swiss, filed notice of opposition and a statement of grounds opposing the
registration under sections 5(1), 5(2)(a), 5(2)(b), 5(3) and 5(4)(a) of the Trade Marks Act 1994,
hereafter the Act. The opposition was directed against some of the goods specified in classes 9,
14, 37 and 40 of the registration. These are:
(a) in Class 9:
clocking devices; apparatus for checking and measuring distance; apparatus for acquiring,
transmitting, managing and distributing information and data; equipment for signalling and
displaying data for use in the laboratory or in industrial plant or for scientific or industrial
purposes to the extent that this data is time of day, or any other data relating to time;
computer controlled apparatus for checking and controlling the measurement of distance;
electronic information and Page 2 data display apparatus for use in the laboratory or in
industrial plant or for scientific or industrial purposes; measuring, timing and display
apparatus for use in the laboratory or in industrial plant or for scientific or industrial
purposes;
(b) in Class 14:
Chronometric and horological products for science and industry; industrial and scientific
To continue reading
Request your trial