Omega Engineering Inc. v Omega SA
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE RIMER |
| Judgment Date | 02 August 2004 |
| Neutral Citation | [2004] EWHC 2315 (Ch) |
| Court | Chancery Division |
| Date | 02 August 2004 |
| Docket Number | CH/2004/APP/190+238 |
[2004] EWHC 2315 (Ch)
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION
Royal Courts of Justice
Strand
London WC2A 2LL
Mr Justice Rimer
CH/2004/APP/190+238
MR CHRISTOPHER MORCOM QC (instructed by Collyer-Bristow) appeared on behalf of the CLAIMANT
MR MICHAEL BLOCH QC with MR MICHAEL EDENBOROUGH (instructed by Messrs Medyckyj & Co) appeared on behalf of the DEFENDANT
Introduction
This is the defendant's appeal by a notice dated 30 March 2004 against Master Bragge's order of 16 March 2004 dismissing the defendant's application for an order striking out the claimant's claim and ordering the defendant to pay costs to the claimant. Permission to appeal was given by the Master. The claimant is Omega Engineering Inc ("Engineering"), which appears by Mr Christopher Morcom QC. The defendant is Omega SA ("Omega"), which appears by Mr Michael Bloch QC and Mr Michael Edenborough. It is perhaps not surprising that, because of the similarity of the parties' names, there have been many differences and disputes between them as to their respective intellectual property rights. They are, according to one of the witness statements before me, currently engaged in some 20 disputes.
The point raised by Omega in its strike out application is that it says that the issue that Engineering's action raises is one with which Engineering has harassed it twice before in previous proceedings. It does not claim that those proceedings decided the issue, but it does claim that it was an abuse of the process for Engineering to seek to litigate that issue for a third time in the present action. I have said enough to indicate that Omega's argument is based on the type of abuse of process considered by the House of Lords in Johnson v Gore Wood and Co. (a firm) [2002] 2 AC 1. In order to understand how the point arises, I must first describe the earlier proceedings and identify how the relevant issue is said to have been raised in them.
The earlier proceedings
Engineering is registered in Connecticut and is the registered proprietor of various United Kingdom trade marks incorporating the word "OMEGA" for goods in Class 9 of the International Classification. It manufactures and sells throughout the European Union a wide range of equipment for use in industrial and scientific fields. Omega is a Swiss company which has long been associated with the sale of watches and whose trade includes the provision of time-keeping equipment for use in sporting events and the development of public information and display systems for use in railway stations, airports and so on. Omega is the registered proprietor of the UK trade mark, consisting of the word "OMEGA" coupled with the Greek letter "?", and that trade mark is also for goods in Class 9. This is the trade mark in suit and I will refer to it as "the trade mark". Omega filed its application for the registration of the trade mark on 15 June 1951 and a copy certificate of registration which is in evidence suggests that the registration was completed on 12 December 1951.
As at 14 September 2001 the specification of goods in respect of which the trade mark was registered read as follows:
"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."
I shall call this "Specification A".
On 14 September 2001 Engineering applied to the Trade Marks Registry for a partial revocation of the registration of the trade mark on the grounds of alleged non-use. Engineering's Statement of Grounds read:
"[Engineering] contends that the mark which is the subject of the above Registration has not been used by the Proprietor of the mark for at least the last five years in respect of any of the goods covered by the Registration, apart from sports timing equipment, and to the extent that the aforesaid goods extend beyond sports timing equipment, the Registration should be revoked under section 46(1)(a) or in the alternative under section 46(1)(b) of the Trade Marks Act 1994."
Omega's Counterstatement was dated 2 January 2002 and alleged, so far as material:
"1. The registered trade mark has been used in the UK by the registered proprietors or with their consent on all goods covered by the registration except life-saving and weighing instruments and apparatus.
2. The registration should not be revoked under sections 46(1)(a) or 46(1)(b) of the Trade Marks Act 1994 except in relation to life-saving and weighing instruments and apparatus."
That exchange of pleadings showed, therefore, that Engineering's case was that the trade mark had been used only in respect of sports timing equipment, whereas Omega asserted that it had been used in respect of all goods within Specification A other than life-saving goods and weighing instruments and apparatus. Omega recognised, therefore, that at least some narrowing of Specification A was appropriate, but the primary issue was as to what narrowing was appropriate. A secondary issue, which would also arise, would be the date from which any appropriate partial revocation ought to take effect.
As regards the Registry's jurisdiction in respect of both issues, section 46 of the Trade Marks Act 1994, headed "Revocation of registration", provides, so far as material, as follows:
"(1) The registration of a trade mark may be revoked on any of the following grounds-
(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use…
(5) Where grounds for revocation exist in respect of only some of the goods or services for which the trade mark is registered, revocation shall relate to those goods or services only.
(6) Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from-
(a) the date of the application for revocation, or
(b) if the registrar or court is satisfied that the grounds for revocation existed at any earlier date, that date."
Section 100 of the Act, headed "Burden of proving use of trade mark", provides:
"If in any civil proceedings under this Act a question arises as to the use to which a registered trade mark has been put, it is for the proprietor to show what use has been made of it."
Engineering's application was heard on 22 January 2003 by a Hearing Officer, Mr DW Landau, for the Registrar of Trade Marks. Engineering was represented, as it is now, by Mr Morcom, and Omega was represented by Ms Sofia Arenal, of Mewburn Ellis, Patent Agents. Both sides had filed evidence.
The Hearing Officer gave his written decision on 30 January 2003. He first reviewed the evidence over some ten pages. He then embarked on the reasons for his decision, concluding in paragraph 50 that the current registration of the trade mark should be partially revoked to the extent that the revised specification was to read:
"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."
I shall call this "Specification B".
A further issue on which the Hearing Officer then had to rule was as to the date from which the registration should be so revoked. This is the issue relevant for the purposes of the present appeal and it is necessary to look at the material relating to it.
Mr Morcom's argument before the Hearing Officer was that the registration should be revoked from a date commencing five years after the completion of the registration of the trade mark. His skeleton argument for the purposes of that hearing was dated 20 January 2003. In paragraph 1 Mr Morcom explained that the application was for revocation for alleged non-use, under section 46(1)(a) and (b), and he referred to the Statement of Grounds. In paragraph 2 he said that for the purposes of section 46(1)(b) the relevant five-year period ran from 14 September 1996 to 14 September 2001 (the latter being the date of the application). The skeleton argument then turned to the evidence on use, but it reverted to the point about the date of revocation in paragraphs 20 and 21, where Mr Morcom said this:
"20. as regards the date at which the order for revocation should be made effective, under section 46(6) of the Act provides that the rights of the proprietor shall be deemed to have ceased to the extent of the revocation at the date of the application (which is 14 September 2001) or, if the registrar (or court) is satisfied that the grounds for revocation existed at an earlier date, that date.
21. In the present case the proprietors have only provided evidence of use of the mark OMEGA (for certain goods in Class 9) in the period 1996–2001. So far as the goods falling within the specification in respect of which there has been no use, the proprietors have provided no evidence of the use of the mark at any time. Under section 100 of the Act it is for [Omega] to show what use has been made of...
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