Omega SA v Omega Engineering Inc.
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE JACOB |
| Judgment Date | 03 June 2003 |
| Neutral Citation | [2003] EWHC 1334 (Ch) |
| Court | Chancery Division |
| Docket Number | CH/2003/APP/147 |
| Date | 03 June 2003 |
[2003] EWHC 1334 (Ch)
Mr. Justice Jacob
CH/2003/APP/147
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
MR. M. EDENBOROUGH (instructed by Messrs. Collyer-Bristow) appeared on behalf of the Claimant.
MR. C. MORCOM Q.C. (instructed by Messrs. Medyckyj & Co.) appeared on behalf of the Defendant.
(As approved by the Judge)
This is an appeal from a decision of Mr. Landau acting for the Registrar of Trade Marks given on 30th January 2003. An American company, Omega Engineering Inc., applied for partial revocation of trade mark registration number 699057 in the name of the well known Swiss watch company, Omega. The specification as it stood before the application reads 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."
Then the specification reads:
"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)."
The Hearing Officer has summarised the evidence of use which had been put in by the trade mark owners, the attack being based on non-use. Somewhat sadly, he had apparently good cause to criticise the quality of that evidence. It remains the case that those concerned to prove use of trade marks should provide clear evidence relating to the goods or services which are relevant, not to other goods, and should ensure the evidence is concise, precise but yet complete.
The upshot of all this, so far as I am concerned, boils down to a very narrow point. The trade mark owners wish to keep within the specification the following goods, "signalling instruments and apparatus". To justify this the only uses which they have, are for display boards and screens and associated technical equipment for information boards on railway stations and scoreboards at sports grounds. Mr. Edenborough accepts that probably on any basis the specification is too wide. It would include flags used by guards on the trains, or that used to be used by guards on trains. It would include semaphore flags, Morse code transmitters, and so on. He suggested there could be fall-back positions: "public information display apparatus" or perhaps, if he was relying only on the apparatus that was used on railway stations, "passenger information display apparatus".
Before one gets, however, to that, one must ask whether scoreboards and railway information screens (for which use has been proved) are properly to be regarded as "signalling instruments and apparatus". Mr. Edenborough submits that they are. In a technical sense there is something in what he says. You look at the screen for information and because it is providing information visually it is, in a sense, sending out a signal. But I do not think it is right to regard trade mark specifications from a technical point of view. It is much more important to regard them from a trade point of view. These specifications are not patent claims, they are specifications of goods for the purposes of trade. I do not believe that anybody in the ordinary way of things would regard a display screen as a "signalling instrument or apparatus". On the contrary, in the ordinary way of things someone who looks at a television screen or other sort of screen would regard that as the thing which had received the signal. Technically, as a matter of information science, maybe a thing is also providing information and in that sense sending a signal, but in the commercial sense it is not a signalling instrument.
The Hearing Officer, I think, approached it completely accurately. He said as follows:
"[The proprietor] showed use of the trade mark in relation to public information display apparatus. However, I cannot see how such goods are encompassed by the specification of the registration. Ms. Arenal argued that signalling instruments and apparatus would encompass such goods as they receive a signal. Just because a product receives a signal it does not make it a piece of signalling apparatus. Televisions and radios receive signals, it would not be normal to describe them as signalling apparatus."
That seems to me to have approached the matter entirely accurately and properly. This appeal is by way of review only. So it has to be shown that the...
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...appreciate that revocation from an earlier date needed to be sought. 36 Addressing the emphasis placed on specific pleading in Omega SA v Omega Engineering Inc 37 the Judge stated that, while it might be desirable that an earlier date is pleaded, it is not mandatory and the Commissioner ret......
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