Decision Nº O/227/05 from Intellectual Property Office - (Trade market), 13 July 2005
| Judge | Professor Ruth Annand |
| Case Outcome | Appeal dismissed. - |
| Date | 13 July 2005 |
| Registration Number | UK00001557184 |
| Administrative Decision Number | O/227/05 |
| Court | Intellectual Property Office (United Kingdom) |
O-227-05
IN THE MATTER OF REGISTRATION No. 1557184
IN THE NAME OF OMEGA ENGINEERING INC
AND IN THE MATTER OF AN APPLICATION FOR A DECLARATION OF
INVALIDITY No. 80762
BY OMEGA SA (OMEGA AG) (OMEGA LTD)
AND IN THE MATTER OF AN APPEAL TO THE APPOINTED PERSON
BY THE REGISTERED PROPRIETOR
AGAINST THE DECISION OF MR D. LANDAU
DATED 15 JULY 2004
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DECISION
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Introduction
1. This is an appeal against a decision of Mr. David Landau, the Hearing Officer
acting on behalf of the Registrar, dated 15 July 2004, BL O/211/04 in which
he granted an application for a declaration of partial invalidity of UK Trade
Mark No. 1557184 by Omega SA (Omega AG) (Omega Ltd) in accordance
with section 47(2) and section 5(2)(b) and 5(4)(a) of the Trade Marks Act
1994 (“TMA”).
2. UK Trade Mark No. 1557184 stands in the name of Omega Engineering Inc.
and concerns the word mark OMEGA. It was applied for on 16 December
1993 and entered on the Register on 16 April 1999 in relation to a wide range
of goods in Class 9 for use in industrial and scientific fields. The entire list is
set out in Annex A.
3. Application No. 80762 for a declaration of invalidity was filed on 19 March
2002. Based on a number of earlier trade marks and earlier rights, it asks for
invalidation only in respect of the following goods in UK Trade Mark No.
1557184:
“period timers; [ …]; all for industrial and/or scientific purposes”.
4. Both sides submitted extensive evidence in support of their respective
positions and reference is made to the Hearing Officer’s comprehensive
summary at paragraphs 19 – 52 of his decision. At least two High Court cases
between the parties have relevance to these proceedings: Omega SA v. Omega
Engineering Limited [2002] EWHC 2620 (Ch), Pumfrey J. and Omega
Engineering Inc. v. Omega SA [2004] EWHC 2315 (Ch), Rimer J.
2
5. The Hearing Officer referred to the applicant for invalidation as “Swiss” and
the registered proprietor as “US”. I shall do the same.
The earlier trade marks
6. The Hearing Officer concentrated his decision under section 47(2)(a) of the
TMA on Swiss’ UK Registration No. 699057 in Class 9 for the trade mark:
7. When the application for invalidation was filed on 19 March 2002, the
specification of 699057 covered:
“nautical, surveying, weighing, measuring, signalling, checking
(supervision) and life-saving instruments and apparatus; teaching
instruments and apparatus (other than material); and calculating
machines. CANCELLED IN RESPECT OF “calculating machines”.
CANCELLED IN RESPECT OF instruments and apparatus, all for
measuring, signalling and checking (supervision) of heat and
temperature for scientific and industrial use” (Specification A).
8. However, by the time the application came to be heard by the Hearing Officer,
US had succeeded in partially revoking 699057 on grounds of non-use so that
the remaining goods were:
“measuring and signalling apparatus and instruments, all for use in
sport; but not including calculating machines nor instruments and
apparatus for measuring, signalling and checking (supervision) of heat
and temperature for scientific and industrial use” (Specification B).
That partial revocation took effect from14 September 2001 (the date of the
US’s application for revocation, no earlier date having been claimed), which
was confirmed by Jacob J. on appeal in Omega SA v. Omega Engineering Inc.
[2003] FSR 893. A subsequent attempt by US to revoke 699057 with effect
from an earlier time was thwarted by Rimer J. at [2004] EWHC 2315 (Ch.) on
the ground that the proceedings were oppressive to Swiss. The dates are
important because US seek to defend the present attack, inter alia, on the
ground that relative invalidity must be determined at the date of the
application for invalidity (19 March 2002) and not the date of the application
for registration (16 December 1993), i.e., on the basis of the reduced
specification for 699057 - Specification B.
9. Swiss point out that in any event their invalidation action relied on several
earlier trade marks, in particular, 1456848 in Class 37 for O OMEGA, which
at the date of the application for invalidity covered:
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