Omega Engineering Inc. v Omega SA
| Jurisdiction | England & Wales |
| Judge | THE HON MR JUSTICE ARNOLD |
| Judgment Date | 28 May 2010 |
| Neutral Citation | [2010] EWHC 1211 (Ch) |
| Docket Number | Case Nos: HC10C00483, CH/2009/APP/0719 |
| Court | Chancery Division |
| Date | 28 May 2010 |
[2010] EWHC 1211 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Before: The Hon Mr Justice Arnold
Case Nos: HC10C00483, CH/2009/APP/0719
Hugo Cuddigan (instructed by Collyer Bristow LLP) for the Claimant and Respondent
Michael Edenborough Q.C. (instructed by Laytons) for the Defendant and Appellant
Hearing date: 12 May 2010
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
MR. JUSTICE ARNOLD :
Introduction
This is another battle in the long-running war between the American company Omega Engineering Incorporated (which I shall refer to as “Engineering”) and the Swiss company Omega S.A. (Omega AG) (Omega Ltd) (which I shall refer to as “Swiss”) over the trade marks OMEGA and O. Whilst this war has not been running for as long as the hundred years' war between Anheuser-Busch Inc and Budejovicky Budvar NP over the BUDWEISER and BUD trade marks worldwide, it has been running for a similar duration to the thirty years' war between those litigants in this country (see Budejovicky Budvar NP v Anheuser-Busch Inc [2009] EWCA Civ 1022, [2010] RPC 7).
The present battle has two fronts. The first is an application by Engineering for summary judgment on a claim for breach of contract commenced by it in this Court. The second is an appeal by Swiss against a decision of David Landau acting for the Registrar of Trade Marks dated 12 November 2009 ( BL O/352/09, “the Decision”). By the Decision the hearing officer dismissed Swiss' opposition to Engineering's application number 2456185C (“the Application”) to register the trade mark OMEGA (“the Trade Mark”) in respect of the following goods (“the Goods”) in Class 14:
“instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature and having provision to display the time of day”.
Common to both fronts is an agreement between Engineering and Swiss dated 11 April 1984 (“the Agreement”). Engineering's case in summary is that: (1) by clause 5 of the Agreement Swiss undertook inter alia not to object to the registration by Engineering of the Trade Mark in respect of the Goods; (2) Swiss thereby consented to registration of the Trade Mark so as to preclude it from raising an objection on relative grounds pursuant to section 5(5) of the Trade Marks Act 1994; and (3) by opposing the Application Swiss has acted, and continues to act, in breach of the Agreement. Swiss's case in summary is that: (1) clause 5 of the Agreement on its true construction does not prevent it from objecting to the Application; (2) in the alternative, Engineering is precluded from enforcing clause 5 on the grounds of estoppel, variation or acquiescence; and (3) in any event, section 5(5) has been impliedly repealed.
Classification of trade marks
For reasons that will appear, central to these disputes is a very technical, not to say arcane, area of trade mark law, namely that of classification. In order properly to understand the disputes, let alone to resolve them, it is essential to know the relevant law at the relevant dates, namely April 1984 and May 2007. To my surprise, neither counsel addressed the legal framework in their respective skeleton arguments. Perhaps they assumed that I did not need to be told. Be that as it may, I must set out the law in a little detail in order for my reasoning on the issues that arise to be comprehensible.
Trade marks may be registered for any of the vast range of goods and services which are traded. For administrative reasons, in particular so as to facilitate searching, it has long been the practice of trade mark registries throughout the world to classify those goods and services into numbered classes. Although the United Kingdom adopted a classification system in conjunction with the first Trade Marks Act in 1875, the present system has its origins in an international conference in London in 1934 when an internationally-agreed list of classes was drawn up. This was adopted in the United Kingdom as Schedule IV to the Trade Marks Rules 1938 made under section 40(1)(c) of the Trade Marks Act 1938.
The Nice Agreement
In 1957 an international convention concerning the classification of goods and services, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, was agreed. This came into force in 1961 and has subsequently been revised on three occasions. The Nice Agreement provides for the establishment and periodic revision of a Classification consisting of: (i) a numbered list of classes (each of which consists of a “class heading” which describes the goods or services in that class) together with explanatory notes; and (ii) an alphabetical list of goods and services with an indication of the class into which each of the goods or services falls: see Article 1(2). The Nice Classification is based on that drawn up at the London conference in 1934.
It should be noted that the Nice Agreement is only an agreement as to classification, not as to the effect of classification. Thus Article 2(1) provides:
“Subject to the requirements prescribed by this Agreement, the effect of the Classification shall be that attributed to it by each country of the Special Union. In particular, the Classification shall not bind the countries of the Special Union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks.”
The United Kingdom acceded to the Nice Agreement and adopted the Nice Classification, initially by way of amendment of Schedule IV to the 1938 Rules in 1964: see the account given in CAL-U-TEST Trade Mark [1967] FSR 39 at 43–45. As at April 1984 the Nice Agreement continued to be implemented in the United Kingdom by Schedule IV to the 1938 Rules (as subsequently amended) made under the 1938 Act.
The relevant provisions in the 1938 Act and 1938 Rules
The 1938 Act contained three provisions relating to classification. First, section 3 of the 1938 Act provided:
“A trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods falls shall be determined by the Registrar, whose decision shall be final.”
Secondly, section 36 provided for rules to be made empowering the Registrar to take steps necessary to implement any amended or substituted classification.
Thirdly, section 40(1) of the 1938 Act provided:
“The Board of Trade may from time to time make such rules, prescribe such forms and generally do such things as they may think expedient –
…
(c) for classifying goods for the purposes of registration of trade marks;
…”
Turning to the 1938 Rules made under section 40(1)(c), rule 21 provided inter alia:
“… Each application shall be for registration in respect of goods in one class of Schedule IV only….”
It followed from this that a trade mark could only be registered in one class at a time, although the same trade mark could be registered in another class by dint of another application.
The effect of classification under the 1938 Act
The effect of classification under the 1938 Act was stated by Kerly's Law of Trade Marks and Trade Names (11 th edition published in 1983) at §5–05 as follows:
“Classification is primarily a matter of convenience in administration e.g. in facilitating the search which is necessary to ascertain whether the application is objectionable under section 12 [of the 1938 Act]. What is of real importance in determining the rights of parties, as has been pointed out, is the specification of goods or services entered on the Register and the validity of the registration….”
Amongst the authorities cited in support of this proposition, it is sufficient to refer to two. First, in Carless, Capel & Leonard v F. Pilmore-Bedford & Sons (1928) 45 RPC 205, the trade mark in suit was registered in Class 47 (of the pre-1938 classification) in respect of “oils for lighting and heating”. The claimant alleged infringement by the sale of petrol and relied upon the facts that (a) petrol fell within Class 47 and (b) the Registrar had opined that the mark would cover petrol. Tomlin J held at 217 that commercially nobody spoke of petrol as oil and that, if the mark (which included the words “petroleum oil for burning”) did cover petrol, it would be misleading. Accordingly, he held that, assuming without deciding that the mark did cover petrol, it should be limited so as to exclude petrol. This case was cited in CAL-U-TEST (supra at 45) as authority for the proposition that:
“When it comes, however, to determining the rights under a trade mark registration, it is well established that it is the actual specification of goods as entered on the register which matters, and that the class in which those goods have been put may not be material.”
In Ofrex Ltd v Rapesco Ltd [1963] RPC 169 the claimant owned the trade mark OFREX registered in Class 39 (of the pre-1938 classification) in respect of inter alia“stationery”. The defendant sold staples for an office stapling machine under the same mark. The defendant contended that it did not infringe because “staples (metal)” were listed in Class 13 in the Registry's Guide to Classification. The Claimant answered that by producing a letter from the Registrar saying that “stapling presses being articles of stationery and staples for use therein” were within Class 39. Pennycuick J decided the case on the ground that staples were stationery...
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