Omega SA v Omega Engineering Ltd
| Jurisdiction | England & Wales |
| Judge | MR JUSTICE PUMFREY |
| Judgment Date | 28 November 2002 |
| Neutral Citation | [2002] EWHC 2620 (Ch) |
| Date | 28 November 2002 |
| Court | Chancery Division |
| Docket Number | Claim No. CH/2002/APP/0305 |
[2002] EWHC 2620 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
The Strand
London WC2A 2LL
Mr Justice Pumfrey
Claim No. CH/2002/APP/0305
MR M. EDENBOROUGH (instructed by Messrs Medyckyj & Co) appeared on behalf of the Appellant.
MR C. MORCOM Q.C. (instructed by Messrs Collyer Bristow) appeared on behalf of the Respondent.
This is an appeal from the decision of Mr Reynolds, the Hearing Officer acting for the Registrar of Trade Marks, who required an alteration to the specification of goods relating to Trade Mark Application No. 2179158 for the OMEGAMETER, which stands in the name of Omega Engineering Incorporated of Stamford, Connecticut in the USA. The registration was opposed by Omega SA and subsidiaries Omega AG and Omega Limited, who are concerned in the manufacture of watches. For reasons I shall explain, this judgment is by way of a preliminary judgment upon which I shall invite further argument.
The specification of goods of the mark as applied for is extremely extensive. For present purposes, it is only necessary to observe that the goods are all qualified by the general words "all for industrial and/or scientific purposes" and that they include period timers. The opponents opposed the registration of the mark, so far as it related to period timers, on the basis of their several existing trade mark registrations for the word "OMEGA" in respect of watches and time keeping and measuring equipment under section 5(2)(b) of the Trade Marks Act 1994. They also relied upon their Common Law rights to prevent passing off under section 5(4) of the Act.
The Hearing Officer reviewed the evidence filed by both sides. He concluded, in paragraph 33 of his decision:-
"33. I accept, therefore, that the opponents enjoyed a significant reputation under their mark in relation to watches and time-keeping systems for sporting events at the material date in these proceedings. I am less clear as to the extent of their reputation in public information display systems but note that Mr Coleman says this side of the business started around 1980 and that the systems specifically referred to are located in prominent locations", and he gives as examples Liverpool Street Station and Gatwick Airport.
In respect of the opponents, the conclusions of the Hearing Officer are summarised in paragraph 36 of his decision:-
"36. … Whilst Mr Morcom did the most he could with limited material, in the final analysis the evidence of any trade in timers or period timers in this country is thin to the point of being non-existent or lost in the generality of Mr Michel's claim."
I should add that Mr Michel was one of the deponents for Omega Engineering Incorporated, who, for the purposes of brevity, I shall hereafter refer to as "Engineering".
"The most that can be said is that timers have featured (and then not prominently) in Omega catalogues that have circulated in the UK. Making the best I can of this evidence the applicants have fallen a long way short of substantiating any trade or recognition in the market place in timers under the mark OMEGAMETER or OMEGA. Their claimed use is insufficient, therefore, to be of assistance to them in my consideration of Section 5 issues."
It was accepted before the Registrar that this was not an identical marks case, the mark relied on by the opponents being the word "OMEGA" and the mark applied for being the word "OMEGAMETER".
The Hearing Officer made his determination, to which I have referred, in arriving at the global appreciation called for by section 5(2)(b) of the Act, as explained in the quartet of well known cases in the European Court of Justice to which the Hearing Officer referred in paragraph 27 of his decision, that is to say, Sabel BV v Puma AG [1998] ETMR 1, Canon Kabushiki Kaisha v Metro-Goldwin-Mayer Inc [1999] ETMR 1, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77 and Marca Mode CV v Adidas AG [2000] ETMR 723.
The opponent's mark principally relied on was accurately described by the Hearing Officer in his decision in paragraph 37. Considering this mark, which consists of two components, the Greek capital letter omega "O" and the word "OMEGA" (in Latin capitals), the Hearing Officer concluded in paragraph 42 of his decision:-
"I do not think there can be any doubt than that the words are visually, aurally and conceptually similar within the terms of the tests laid down in the ECJ cases …"
Then, in paragraph 43, he said:-
'Turning to the goods the opponents' specification covers " … measuring … instruments and apparatus". It has been cancelled insofar as such goods are to be used for measuring "heat and temperature for scientific and industrial use". I regard the specification that remains as covering measuring instruments and apparatus for other purposes. Thus measurement of time is not caught by the cancellation. Nor, of course, does it preclude time measurement in a scientific and industrial context. I conclude that the specification of the opponents' earlier trade mark is sufficiently broad to cover period timers which on any reasonable interpretation of those words are no more than devices for measuring periods of time. Although expressed differently I regard the respective specifications as covering identical goods."
The effect of the cancellations, which were carried out, as I understand it, pursuant to an agreement between the parties which in fact forms the central matter of this appeal, is perhaps slightly difficult. The specification of goods as originally registered is "Nautical surveying, weighing, measuring, signalling, checking (supervision) and life-saving instruments and apparatus; teaching instruments and apparatus (other than material); and calculating machines". It was cancelled in relation to calculating machines, but then the note on the Register says 'CANCELLED IN RESPECT OF instruments and apparatus, all for measuring, signalling and checking (supervision) of heat and temperature for scientific and industrial use".
It is not quite clear to me whether a cancellation in that form is a proper form of cancellation. It seems to me that to carry out the effect which was obviously intended it is probably necessary to amend the specification of goods to reflect the limitation of the scope of the words that remain to the specified articles otherwise than for industrial and/or scientific use. Be that as it may, it is was the intention of the parties, I have no doubt, to limit the scope of the registration in the manner which I have indicated.
The generality of the words "measuring instruments and apparatus" is such that it can hardly avoid covering period timers. In those circumstances, I think that it is clear that the conclusion reached by the Hearing Officer in paragraph 43 of his decision is the correct decision. He was dealing with, on his findings, a similar marks but identical goods case. In paragraph 44 of his decision, he comes to his conclusion on likelihood of confusion as follows:-
"I have already concluded that neither the applicants' use nor the existence of [a] registration … is of assistance to them and that I must consider the matter on the basis of notional and fair use. Taking the matter in the round I find that there is a likelihood of confusion. Subject, therefore, to my consideration of the defence the applicants' claim based on the Agreement between the parties the opposition must succeed."
I take this to be a finding that there exists a likelihood of confusion between the mark as applied for and the opponent's mark under section 5(2)(b) in respect of the whole of the specification of goods of the mark as applied for so far as it relates to period timers.
By way of cross appeal, the Applicants challenge this conclusion of the Hearing Officer. In their Respondent's notice, they contend that the test which the Hearing Officer should have applied is whether or not there exists a real and tangible danger of confusion and that this is the true meaning of the words "likelihood of confusion" in section 5(2) of the 1994 Act. The words "real tangible danger of confusion" are familiar words, originating as they do from the decision of Mr Justice Romer in Jellinek's Trade Mark Application (1946) 63 RPC 58 and that of the speech of Lord Upjohn in the House of Lords in BALI Trade Mark [1969] RPC 472. Both decisions are well known in the context of the Trade Marks Act 1938.
I must reject this contention. It cannot be too frequently emphasised that cases under the 1938 Act are not a guide to the interpretation of the Trade Marks Act 1994, which, in its material provisions, derives from the acts of the Community legislature, in particular from the First Council Directive 89/104 of December 21st 1988 to approximate the laws of the Member States relating to trade marks. It is of course true that there are fundamental principles that both the old law and the new law observe in their own way. But these principles are so general that they cannot provide a useful guide to the domestic court in reaching a conclusion, for example, on the degree of likelihood of confusion which is necessary to satisfy section 5(2).
On the contrary, the necessary guidance as to the meaning of that term is to be found in the decisions of the European Court of Justice referred to by the Hearing Officer. It must be remembered that in coming to the guidance which they expressed, the European Court of Justice will have not only compared the language versions of the provisions in issue, each of which is equally valid, but will also have paid attention to submissions...
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