Decision Nº O/282/05 from Intellectual Property Office - (Trade market), 17 October 2005
| Judge | Professor Ruth Annand |
| Case Outcome | Appeal partially successful. .. |
| Registration Number | UK00000723200 |
| Date | 17 October 2005 |
| Administrative Decision Number | O/282/05 |
| Court | Intellectual Property Office (United Kingdom) |
O-282-05
IN THE MATTER OF REGISTRATION No. 723200
IN THE NAME OF OMEGA SA (OMEGA AG) (OMEGA LTD)
AND IN THE MATTER OF AN APPLICATION FOR REVOCATION No. 81325
BY OMEGA ENGINEERING INC
AND IN THE MATTER OF AN APPEAL TO THE APPOINTED PERSON
BY THE REGISTERED PROPRIETOR
AGAINST THE DECISION OF MR D. LANDAU
DATED 13 JANUARY 2005
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DECISION
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Introduction
1. This is an appeal against a decision of Mr. D. Landau, the Hearing Officer acting on
behalf of the Registrar, dated 13 January 2005 (BL O/017/05), in which he partially
revoked UK Trade Mark Registration No. 723200 in the name of Omega SA (Omega
AG) (Omega Ltd) on grounds of non-use with effect from 3 October 1965. I heard the
appeal together with an appeal against another decision of Mr. Landau, dated 11
January 2005 (BL O/007/05), in which he partially revoked again for non-use UK Trade
Mark Registration No. 699058 in the name of the same proprietor. The cases were not
consolidated. Although the cases share certain features, they involve different trade
marks and raise different issues.
2. UK Trade Mark Registration No. 723200 is for the words OMEGA CONSTELLATION.
The mark was registered as from 1 April 1954 but the registration procedure was not
completed until 3 October 1960. The mark was registered for all goods included in
Class 14.
3. On 27 June 2003, Omega Engineering Inc. applied to revoke the registration on the
grounds in section 46(1)(a) and (b) of the Trade Marks Act 1994 (“TMA”) that the mark
had not been put to genuine use in the United Kingdom for goods in Class 14 except
wristwatches and parts and fittings therefor.
4. In their counterstatement filed on 23 October 2003, the registered proprietors claimed
genuine use of the mark in relation to precious metals and their alloys and goods in
precious metals or coated therewith, not included in other classes; jewellery, precious
stones; horological and chronometric instruments. On 24 December 2003 and 7
December 2004, the registered proprietors filed partial surrenders of goods within the
registration. The upshot is that they seek to maintain the registration in Class 14 only
in respect of horological instruments; parts and fittings therefor.
5. The Hearing Officer perceived the issues in dispute to be whether there was evidence
of genuine use in relation to clocks, what would be a fair description of any goods that
were not the subject of revocation or were not revoked and whether the use of the
trade mark shown was use in a form which does not alter the distinctive character of
the mark in the form in which it was registered. He did not understand the registered
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