Decision Nº O/275/09 from Intellectual Property Office - (Trade market), 8 September 2009
| Judge | Professor Ruth Annand |
| Date | 08 September 2009 |
| Administrative Decision Number | O/275/09 |
| Registration Number | UK00002226666 |
O-275-09
IN THE MATTER OF
TRADE MARK APPLICATION No. 2226666
IN THE NAME OF
OMEGA ENGINEERING INC.
AND IN THE MATTER OF
OPPOSITION No. 93220 THERETO
BY OMEGA SA (OMEGA AG) (OMEGA LTD)
AND IN THE MATTER OF
APPEALS TO THE APPOINTED PERSON
AGAINST A DECISION OF DR. LAWRENCE CULLEN
DATED 4 JUNE 2008
____________
DECISION
____________
Background
1. On 20 March 2000, Omega Engineering Inc. (“Engineering”) applied to register the
designation OMEGA.CO.UK for use as a trade mark in respect of various goods and
services in Classes 9, 14, 16, 35, 37, 40 and 41. Engineering’s Trade Mark
Application number 2226666 was published in the Trade Marks Journal on 26
November 2004.
2. On 22 February 2005, Omega SA (Omega AG) (Omega Ltd) (“Swiss”) partially
opposed the application for some of the goods and services specified in Classes 9, 14,
37 and 40.
3. By the time the opposition came to be heard before Dr. Lawrence Cullen, the Hearing
Officer acting for the Registrar, on 26 April 2007, the opposed goods and services had
been narrowed down by agreement between the parties to the following:
Class 9
Apparatus for checking and measuring distance; apparatus for acquiring, transmitting,
managing and distributing information and data; computer controlled apparatus for
checking and controlling the measurement of distance; … all for science and/or
industry
2
Class 37
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; customer training; system upgrades; telephone and on
technical support and assistance; instrument maintenance; … all being for science
and/or industry
Class 40
Engineering design services for others in the field of measurement and control; … all
the afore going services for science and/or industry.
4. The opposition was based on a number of Swiss’s earlier trade marks within the
meaning of section 6(1)(a) and (2) of the Trade Marks Act 1994. However, given
Engineering’s amended specifications, Swiss relied at the hearing on the earlier trade
marks described below, which it believed to be most relevant:
5. Swiss’ three earlier UK registrations relied on were for the OMEGA figurative mark:
(a) UK 2052200, filing date 15 January 1996, registered 6 May 2005
Class 9
Electrical and electronic apparatus and instruments for collecting, processing,
assessing and transmitting time-related data; public information display
systems; computers and computer software for use in connection with time
measuring and recording and with public display systems; parts and fittings
for the aforesaid goods; but not including any such goods intended for
scientific, educational or industrial applications and not including any such
goods for photographic lighting purposes or telephone apparatus and not
including computer programs for monitoring and managing computer systems
performance and utilisation and not including computer programs for
optimising mathematical expressions, for predictive or descriptive modelling;
and not including computer software for processing seismic data and related
instruction manuals, for use in services to the oil and gas industries relating to
exploration, evaluation and monitoring of oil and gas formations and seismic
data processing services
(b) UK 699057, filing date 15 June 1951
Class 9
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
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