Omega SA v Omega Engineering Inc.
| Jurisdiction | England & Wales |
| Judge | Lord Justice Mummery,Sir John Chadwick,Lady Justice Black |
| Judgment Date | 27 May 2011 |
| Neutral Citation | [2011] EWCA Civ 645 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2010/1724 |
| Date | 27 May 2011 |
[2011] EWCA Civ 645
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY
THE HON MR JUSTICE ARNOLD
Claim No. HC10C00483, [2010] EWHC 1211 (Ch)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Mummery
Lady Justice Black
and
Sir John Chadwick
Case No: A3/2010/1724
Mr Michael Bloch QC and Mr Michael Edenborough QC (instructed by Laytons) for the Appellant
Mr Henry Carr QC and Mr Hugo Cuddigan (instructed by Collyer-Bristow LLP) for the Respondent
Hearing date: 15 th March 2011
The appeals
This is an appeal by the defendant Omega SA (Swiss) from the order of Arnold J dated 25 June 2010 entering summary judgment in favour of the claimant Omega Engineering Inc (Engineering) for breach of contract by Swiss. The judge also dismissed an appeal by Swiss from the decision of the Registrar of Trade Marks on 12 November 2009. An application for permission to adduce further evidence was also dismissed. It is not pursued on this appeal.
On 24 August 2010 Jacob LJ granted Swiss permission to appeal against the summary judgment and for a second appeal from the Registrar of Trade Marks. Both appeals turn on the same very short point of construction of a written agreement made by the parties on 11 April 1984 (the 1984 Agreement).
Swiss says that there is a question of trade mark law in the case. It concerns the legal effect of the class of goods or services for which a trade mark is registered: is the effect of the class of goods the same when considering registration of a mark and when considering use of a mark?
Engineering says that the case is not about trade mark law at all. It sees this purely and simply as a contract case in which the disagreement is about the meaning of the 1984 Agreement.
Procedural background
Since 1906 Swiss, a Societe Anonyme with a principal place of business in Bienne, Switzerland, has had trade mark registrations for OMEGA for the equivalent of class 14 in the United Kingdom. The registrations correspond to Swiss's core business of timing pieces. Swiss is the only registrant for OMEGA trade marks in class 14, which includes "horological and chronometric instruments."
Engineering's application for registration of the mark OMEGA sparked off another spat in an acrimonious long running battle between the parties. Swiss's opposition to the application failed, but not on a trade mark ground: Swiss's problem is that, in the view of both the Hearing Officer and Arnold J, the 1984 Agreement contractually prevents Swiss from opposing Engineering's application.
Swiss appealed from the Hearing Officer to the High Court. Engineering then started proceedings against Swiss for breach of the 1984 Agreement in opposing its trade mark application and in bringing the appeal and applied for summary judgment against Swiss under CPR Part 24 for an injunction and damages for breach of contract.
Arnold J heard together both the appeal by Swiss and the summary judgment application by Engineering. As indicated above, he dismissed the former and granted the latter. Were his decisions wrong? That is the question in this court.
Agreement: construction and breach
The circumstances of the 1984 Agreement and the intentions of the parties, as expressed in its detailed terms, are all relevant to a decision on its meaning and effect. It was entered into as a co-existence agreement between two parties with different businesses: Swiss for watches and clocks, Engineering for scientific instruments, such as thermometers. However, there was some potential for confusion, unless precautions to prevent it were taken. The parties used similar names. Some of their products were similar in certain respects, in particular thermometers that included a time display.
The parties agreed upon the terms of the 1984 Agreement so that their businesses could co-exist without conflict. The aim was to minimise the risk of confusion between their respective commercial activities under the sign OMEGA. Measures to avoid confusion in the market between their goods were agreed, particularly relating to the use of OMEGA. It was agreed that particular goods would not be put on the market under the name OMEGA.
The background was that Swiss's wristwatches and other chronometers have been known by names that include OMEGA for over 100 years. Engineering, a company established in 1962 in the State of Delaware, USA, has, since it began, been using OMEGA on products for the measurement and control of temperature. Its range of products has expanded to include instruments for the measurement and control of humidity, pressure, strain, force, flow, level pH and conductivity.
Turning from the circumstances of the 1984 Agreement to its actual terms, I adopt the numbering of the clauses added by the judge to its unnumbered provisions. Swiss agreed—
"[5]… not to object to the use or registration by 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"
What were "the excluded goods"? That expression was defined as:-
"[3]. ..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)."
Clauses [3] and [5] in the 1984 Agreement did not mention classes of goods for which trade marks may be registered. Swiss submits that that fact does not prevent the statutory classification of goods from being taken into account as affecting the construction of the description of goods in the 1984 Agreement. It submits that the definition of "the excluded goods" in clause [3] is a sub-set of goods that, at the date of the 1984 Agreement, fell within class 9. That class did not include clocks. They fell within class Swiss says that the registration now applied for by Engineering and opposed by Swiss goes beyond "the excluded goods" covered by class 9 and that the registration sought is capable of covering clocks covered by class Swiss therefore claims that clause [5] of the 1984 Agreement does not prevent it from opposing Engineering's application.
Other terms of the 1984 Agreement provided that the areas of commerce covered by it were divided up by the parties. Engineering agreed in clause [2] not to use OMEGA or that sign for temperature measuring instruments or apparatus incorporating a time of day display, unless intended for science or industry. For its part Swiss agreed in clause [4] not to use or register OMEGA for "the excluded goods", being scientific or industrial thermometers, including those with a clock or watch. The area of potential overlap is thermometers with clocks. The division there is that Swiss is not to sell them for science or industry and Engineering is not to sell them except for science and industry.
Those provisions reflected the overall aim of the parties to avoid confusion between each other's products. Subsidiary provisions were included in the 1984 Agreement to bring the...
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