Omega Engineering Incorporated (Claimant and Respondent) v Omega S.a. (Omega Ag) (Omega Ltd) (Defendant and Appellant)
| Jurisdiction | England & Wales |
| Judge | The Hon Mr Justice Arnold,Mr Justice Arnold |
| Judgment Date | 30 November 2012 |
| Neutral Citation | [2012] EWHC 3440 (Ch) |
| Court | Chancery Division |
| Docket Number | Case Nos: HC11C04447 and CH/2011/645 |
| Date | 30 November 2012 |
[2012] EWHC 3440 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Rolls Building, Fetter Lane, London EC4A 1NL
the Hon Mr Justice Arnold
Case Nos: HC11C04447 and CH/2011/645
Hugo Cuddigan (instructed by Collyer Bristow LLP) for the Claimant and Respondent
Michael Edenborough QC (instructed by Laytons Solicitors LLP) for the Defendant and Appellant
Hearing date: 19 November 2012
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.
Contents
| Topic | Paragraphs |
| Introduction | 1–3 |
| Background to the present disputes | 4–15 |
| The 1984 Agreement | 4 |
| The 1994 Agreement | 5–6 |
| Engineering's application for registration and Swiss' opposition to it | 7–11 |
| The Decision | 12 |
| The Appeal | 13 |
| Engineering's claim for breach of contract | 14–15 |
| The Appeal | 16–68 |
| First ground of appeal | 17–57 |
| Impermissible broadening | 18–41 |
| Nonsensical specification | 42 |
| The POSTKANTOOR principle | 43–57 |
| Second ground of appeal | 58–65 |
| Third ground of appeal | 66–67 |
| Conclusion | 68 |
| Engineering's claim for breach of contract and application for summary Judgment | 69–79 |
| Items 1, 5–11 and 13–16 | 70–74 |
| Item 2 | 75 |
| Items 3, 3A and 4 | 76–77 |
| Item 12 | 78 |
| Items 17 and 18 | 79 |
| Result | 80 |
Introduction
This is a further battle in the 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. Much of the factual and legal background to the present battle is set out in my judgment on the previous battle dated 28 May 2010: [2010] EWHC 1211 (Ch), [2010] ETMR 49 ("my first judgment"). In the interests of brevity, I shall take my first judgment as read. My decision was upheld by the Court of Appeal in a judgment dated 27 May 2011: [2011] EWCA Civ 645, [2011] ETMR 40. On 1 November 2011 the Supreme Court refused Swiss permission to appeal against that decision.
Like the previous battle, the present battle has two fronts. The first is an appeal by Swiss against a decision of Oliver Morris acting for the Registrar of Trade Marks dated 11 October 2011 ( BL O/343/119, "the Decision"). By the Decision the hearing officer dismissed Swiss' opposition to Engineering's application number 1571303A ("the 303A Application"). The second is an application by Engineering for summary judgment on a claim for breach of contract commenced by it in this Court.
Common to both fronts are two agreements between Engineering and Swiss. The first agreement is dated 11 April 1984 ("the 1984 Agreement"). The interpretation and effect of the 1984 Agreement was considered by myself and the Court of Appeal in the judgments cited above. The second agreement is dated 2 August 1994 ("the 1994 Agreement"). The interpretation and effect of the 1994 Agreement was considered by Pumfrey J in his judgment on an earlier battle between the parties dated 28 November 2002: [2002] EWHC 2620 (Ch). Engineering was refused permission to appeal to the Court of Appeal against that decision.
Background to the present disputes
The 1984 Agreement
The 1984 Agreement is set out in full in my first judgment at [34]. For present purposes the key clauses are as follows:
"[3] OMEGA S.A. agrees to cancel from its United Kingdom Registration No.699057 the following goods (hereinafter known as 'the excluded goods'); 'Instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature (including such having provision to record heat or temperature over a period of time and/or to display the time of day)' or a form of wording acceptable to the British Registrar of Trade Marks and stated by him to have the same meaning as the above wording.
[4] OMEGA S.A. undertakes not to use, register, or attempt to register any trade mark consisting of or containing the word OMEGA or the Greek Letter OMEGA, or any element colourably resembling either of the above elements, in respect of the excluded goods.
[5] OMEGA S.A. agrees not to object to the use or registration by OMEGA ENGINEERING of trade marks consisting of or comprising the word OMEGA or the Greek Letter OMEGA, or elements colourably resembling the above elements, in respect of the excluded goods."
The 1994 Agreement
It is not necessary to set out the 1994 Agreement, a number of the clauses of which were quoted by Pumfrey J in his judgment, in full. Recital (F) records that:
"Both parties hereto are desirous of coming to an arrangement for the avoidance of future interference Worldwide between their respective fields of commercial operation under their Rights in respect of Trademarks consisting of or including the word OMEGA and/or the Greek letter O or containing elements colourably resembling either of thos[e] two elements"
The key provisions for present purposes are those contained in clause 4:
"Henceforth from the signing of this Agreement and effective in all countries of the World:—
(a) OMEGA ENGINEERING INCORPORATED undertakes not to use, register or apply to register any trade mark consisting of or containing the word OMEGA or the Greek letter O or any mark containing elements colourably resembling either of those two elements in respect of computer controlled measuring, timing and display apparatus, unless intended for science and industry.
(b) OMEGA SA undertakes not to use, register or apply to register any trade mark consisting of or containing the word OMEGA, or the Greek letter O or any element colourably resembling either of those two elements, in respect of:
' Apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow'.
(c) OMEGA SA will not object to the use or registration by OMEGA ENGINEERING INCORPORATED of any trade mark consisting of or containing the word OMEGA or the Greek letter O or any element colourably resembling either of those two elements in respect of apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow."
Engineering's application for registration and Swiss' opposition to it
As long ago as 6 May 1994, Engineering filed application number 1571303 ("the 303 Application") to register the trade mark set out below ("the Trade Mark") in respect of a long list of goods in Class 9, including "period timers … ; all for industrial and/or scientific purposes; …":
For reasons that are unclear, the 303 Application was not advertised for opposition until 16 January 2002. On 16 April 2002 Swiss filed an opposition against the 303 Application, but only in so far as it related to "period timers". For reasons that are equally unclear, the opposition was still pending at the beginning of 2011.
On 10 January 2011 Engineering applied to divide the 303 Application into two applications, covering "period timers" (303A) and the remainder of the goods in the original specification (303B) respectively. Although Schedule 3 paragraph 10(1) to the Trade Marks Act 1994 provides that an application for registration filed under the Trade Marks Act 1938 which was still pending on the commencement of the 1994 Act shall be dealt with under the 1938 Act, Neuberger J (as he then was) held in Interlego AG's Trade Mark Applications [1998] RPC 69 that it was possible to divide such an application pursuant to section 41(1)(a) of the 1994 Act and rule 19 of the Trade Marks Rules 1994 (now rule 26 of the Trade Mark Rules 2008) since division was a matter of practice and procedure rather than substantive law. Accordingly, the Register permitted Engineering to divide the 303 Application. That decision is no longer challenged by Swiss. The 303B Application proceeded to registration on 13 May 2011.
On 23 June 2011 Engineering's trade mark attorneys wrote to the Registry accepting that, in the light of the judgment of Pumfrey J cited above, "it would be fruitless to proceed … with the [303A] application in its present form". Accordingly, they filed an application on behalf of Engineering to amend the specification of goods of the 303A Application so as to read as follows ("the Goods"):
"Period timers intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature (including such having provision to record heat or temperature over a period of time and/or to display the time of day)."
In addition, they filed on behalf of Engineering a revised counterstatement contending, in short, that the Goods were "excluded goods" within the 1984 Agreement, and thus Swiss was contractually precluded from opposing the 303A Application in relation to the Goods by clause 5 of the 1984 Agreement. In support of this contention they relied upon the judgment of the Court of Appeal cited above.
The Decision
The hearing officer recorded in the Decision that it was common ground that the opposition would succeed but for the proposed limitation of the 303A Application to the Goods and the 1984 Agreement. In addition to a number of issues which are no longer live, he went on to consider (i) whether the amendment of the 303A Application...
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