Strand, London, WC2A 2LL
B e f o r e :
| OMEGA ENGINEERING INCORPORATED
||Claimant and Respondent
|- and -
|OMEGA S.A. (OMEGA AG) (OMEGA LTD)
||Defendant and Appellant
Michael Edenborough Q.C. (instructed by Laytons) for the Defendant and Appellant
Hearing date: 12 May 2010
Crown Copyright ©
MR. JUSTICE ARNOLD :
"instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature and having provision to display the time of day".
Classification of trade marks
The Nice Agreement
"Subject to the requirements prescribed by this Agreement, the effect of the Classification shall be that attributed to it by each country of the Special Union. In particular, the Classification shall not bind the countries of the Special Union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks."
The relevant provisions in the 1938 Act and 1938 Rules
"A trade mark must be registered in respect of particular goods or classes of goods, and any question arising as to the class within which any goods falls shall be determined by the Registrar, whose decision shall be final."
"The Board of Trade may from time to time make such rules, prescribe such forms and generally do such things as they may think expedient –
(c) for classifying goods for the purposes of registration of trade marks;
"… Each application shall be for registration in respect of goods in one class of Schedule IV only…."
It followed from this that a trade mark could only be registered in one class at a time, although the same trade mark could be registered in another class by dint of another application.
The effect of classification under the 1938 Act
"Classification is primarily a matter of convenience in administration e.g. in facilitating the search which is necessary to ascertain whether the application is objectionable under section 12 [of the 1938 Act]. What is of real importance in determining the rights of parties, as has been pointed out, is the specification of goods or services entered on the Register and the validity of the registration…."
"When it comes, however, to determining the rights under a trade mark registration, it is well established that it is the actual specification of goods as entered on the register which matters, and that the class in which those goods have been put may not be material."
The relevant provisions in the 1994 Act and the Trade Mark Rules 2000
"(1) Goods and services shall be classified for the purposes of the registration of trade marks according to a prescribed system of classification.
(2) Any question arising as to the class within which any goods or services fall shall be determined by the registrar, whose decision shall be final."
"The Secretary of the State may make rules-
(a) for the purposes of any provision of this Act authorising the making of rules with respect to any matter, and
(b) for prescribing anything authorised or required by any provision of this Act to be prescribed."
"(1) The prescribed system of classification for the purposes of the registration of trade marks is the Nice Classification.
(2) When a trade mark is registered it shall be classified according to the version of the Nice Classification that had effect on the date of application for registration.
(3) In these Rules-
(a) the 'Nice Agreement' means the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15th June 1957, which was last amended on 28th September 1979; and
(b) the 'Nice Classification' means the system of classification under the Nice Agreement."
"An application may be made in more than one class of the Nice Classification."
It followed that the resulting registration could cover more than one class. (The 2000 Rules have now been replaced by the Trade Mark Rules 2008, but the position remains the same.)
The effect of classification under the 1994 Act
"… In my judgment, the registrar is entitled to treat the Class number in the application as relevant to the interpretation of the scope of the application, for example, in the case of an ambiguity in the list of the specification of goods. The application is a considered statement of the applicant which, on ordinary principles of the construction of documents, has to be read as a whole to determine its meaning and effect. The fact that the internationally agreed Nice Classification System has been devised to 'serve exclusively administrative purposes' (see, for example, rule 2(4) of the Commission Regulation 2868/95 E.C.) does not mean that the selection by the applicant of one or more Class numbers in his application for registration has to be totally ignored in deciding, as a matter of the construction of the application, what the application is for and whether it can properly be amended. I would reject the submission of Mr Purvis that it is only permissible to take account of the Class number when it is expressly (or implicitly) referred to in the description of the 'Specification of goods' column of Form TM3, as in the examples helpfully discussed by Jacob J. in British Sugar Plc v. James Robertson & Sons Ltd  RPC 281 at page 289 (e.g. consideration of the relevance of the practice of the registrar at the date of registration of adding to the list 'All included in this class' and 'All included in class X'). That kind of case is no doubt a stronger one for interpretation of the application by reference to the Class number, but I fail to see why it should be the only kind of case in which the Class number can be taken into account by the registrar or why the registrar should have to ignore the Class number which the applicant (or his advisers on his behalf) have inserted in the Form TM3 as part of the required expression of the applicant's case in relation to the registration of the trade mark."
Revisions to the Nice Classification
"The indications of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong. The Alphabetical List should therefore be consulted in order to ascertain the exact classification of each individual product or service.
If a product cannot be classified with the aid of the List of Classes, the Explanatory Notes and the Alphabetical List, the following remarks set forth the criteria to be applied:
(a) A finished product is in principle classified according to its function or purpose. If the function or purpose of a finished product is not mentioned in any class heading, the finished product is classified by analogy with other comparable finished products, indicated in the Alphabetical List. If none is found, other subsidiary criteria, such as that of the material of which the product is made or its mode of operation, are applied.
(b) A finished product which is a multipurpose composite object (e.g., clocks incorporating radios) may be classified in all classes that correspond to any of its functions or intended purposes. If those functions or purposes are not mentioned in any class heading, other criteria, indicated under (a), above, are to be applied.
(c) Raw materials, unworked or semi-worked, are in principle classified according to the material of which they consist.
(d) Goods intended to form part of another product are in principle classified in the same class as that product only in cases where the same type of goods cannot normally be used for another purpose. In all other cases, the criterion indicated under (a), above, applies.
(e) When a product, whether finished or not, is classified according to the material of which it is made, and it is made of different materials, the product is in principle classified according to the material which predominates.
(f) Cases adapted to the product they are intended to contain are in principle classified in the same class as the product."
Classes 9 and 14
Section 5(5) of the Trade Marks Act 1994 and its counterparts
"Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration"
"The Member States may permit that in appropriate circumstances registration need not be refused or the trade mark need not be declared invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark."
"A Community trade mark may not be declared invalid where the proprietor of a right referred to in paragraphs 1 or 2 [sc. an earlier trade mark or other earlier right] consents expressly to the registration of the Community trade mark before submission of the application for a declaration of invalidity or the counterclaim."
The counterpart to this provision in the 1994 Act is the proviso to section 47(2).
The present disputes
"THIS AGREEMENT is made BETWEEN OMEGA ENGINEERING INCORPORATED, a Corporation organised and existing under the laws of the State of Delaware, United States of America, of P.O. Box 4047, Springdale Station, Stamford, Connecticut 06907, United States of America, (hereinafter knows as "Omega Engineering") of the one part and OMEGA S.A. (OMEGA A.G.) (OMEGA LIMITED), a Societe Anonyme organised under the laws of Switzerland, of the other part.
WHEREAS both parties desire to avoid confusion between their respective goods throughout the world, and particularly in the United Kingdom, and have agreed to take measures to avoid such confusion, such as applying in the first instance to the United Kingdom alone, IT IS HEREBY AGREED, as follows:-
 OMEGA ENGINEERING agrees to withdraw its applications to rectify United Kingdom Registration Nos. 699057, 723199 and 891865 in the name of OMEGA S.A.
 OMEGA ENGINEERING undertakes not to use, register, or apply to register any trade mark consisting of or containing the word OMEGA or the Greek Letter OMEGA, or any marks containing elements colourably resembling either of the aforesaid elements in respect of 'Temperature measuring instruments or apparatus, incorporating a time of day display function, unless intended for science or industry'.
 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.
 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.
 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.
 OMEGA S.A. undertakes either to cancel United Kingdom Registrations Nos. 723199 and 891965, or to part cancel them by excluding from them the excluded goods.
 Both parties agree that for the time being the above provisions will apply solely to the United Kingdom and not elsewhere.
 Both parties agree that this agreement shall bind their assigns and licensees and be communicated to their registered or permitted users, and shall enure to the benefit of the other party's assigns, licensees and registered or permitted users."
Engineering's application for registration and Swiss' opposition to it
"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)."
It can be seen that this wording is identical to the definition of the excluded goods in the Agreement.
"The opposition is in breach of the 1983/84 agreement between the parties which gives consent to the applicant to use and register OMEGA trade marks for the goods listed in this application."
This was the sole ground upon which Engineering resisted Swiss's grounds of opposition.
"(a) on the issue of the Respondent's historical applications and whether it had applied to register this mark with this wording in class 14 or its equivalents world wide
(b) of the Notes to the 4th edition of the Nice Classification."
Engineering's claim for breach of contract
Engineering's claim for breach of contract and application for summary judgment
Construction of the Agreement
"… So the statement of the class number does form part of the application. However, the system of classification is such that a multipurpose composite object can be in both classes correctly and be the same product if it is described in appropriate terms. Such a product is not on a par with a term that could be in a multitude of classes and dependent on the class would be different, so valves in classes 7, 10, 11 and 15 are all very different creatures, a valve for a pump, a valve for a heart, a valve for a radiator, a valve for a trumpet. In such a case the lack of specificity of the description means that the class into which the goods has been placed defines the nature of the goods and, as in Altecnic, to change the class would be to change the very nature of the goods and so be contrary to section 39(2) of the Act. If an application was made in class 7 for a more specific term, eg heart valves, the applicant would be advised that they should be transferred to class 10 as they cannot be in class 7. What is key to the issue is the degree of specificity of the terminology used. In this case there is a great deal of specificity in the terminology, there is no doubt as to the specific nature of the goods for which protection is sought; the same goods for which cover has already been granted in class 9. …"
Estoppel, variation and acquiescence
"Chronometric and horological products for science and industry; industrial and scientific timers; period timers; timers used in industrial and/or scientific apparatus to measure and/or control other variable parameters; all the aforegoing being for science and/or industry."
Swiss opposed the application inter alia with respect to the goods in Class 14. During the course of the proceedings Engineering deleted the goods in Class 14. Swiss contends that, on Engineering's present construction of the Agreement, Engineering would have been entitled to register at least some of these goods. (For completeness, I note that Engineering did seek to rely on the Agreement on a subsequent appeal against the hearing officer's decision in that case: see the decision of Professor Ruth Annand sitting as an Appointed Person in Omega SA (Omega AG) (Omega Ltd) v Omega Engineering Inc (BL O/275/09).)
"Proceedings in the High Court or the Court of Appeal may not be restrained by injunction but both courts may direct a stay of proceedings.
However, the court may restrain a person from instituting proceedings. It may also restrain pending proceedings in a county court or before justices of the peace."
"No cause or proceeding at any time pending in the High Court of Justice, or before the Court of Appeal, shall be restrained by prohibition or injunction; …: Provided always, that nothing in this Act shall disable either of the said Courts from directing a stay of proceedings in any cause or matter pending before it if it shall think fit; …"
This provision was re-enacted in section 41 of the Supreme Court of Judicature (Consolidation) Act 1925. As counsel for Engineering pointed out, however, it was not re-acted when the 1925 Act was repealed and replaced by the Senior Courts Act 1981. Thus the statutory bar that formerly existed does not exist any more.
"It has been strenuously argued by Mr. Grant, who is naturally and properly jealous of the dignity and reputation of the Palatine Court, that the Palatine Court is not an inferior Court to the High Court; that it is a Court of absolutely co-ordinate jurisdiction, and that there is no jurisdiction in a judge of the High Court to grant an injunction restraining proceedings in the Palatine Court. I do not intend to touch upon the delicate topic of the precise position of the Palatine Court—whether it is on a footing of equality or inequality as compared with the High Court. I will assume that it is a Court of co-ordinate jurisdiction. What has that to do with the right of this Court, not to proceed by way of prohibition or certiorari, but simply to grant an injunction in personam against the defendant O'Reilly? If he is properly before the Court as a defendant in the present action, what has the position of the Palatine Court to do with the jurisdiction of the High Court to grant an injunction restraining him from proceeding with an action in the Palatine Court? It could not be disputed that, if O'Reilly had contracted not to commence proceedings in the Palatine Court, this Court would have had jurisdiction to grant an injunction to restrain him from so doing. But can it be seriously suggested that that jurisdiction is limited to cases of contract? In my opinion the jurisdiction must equally apply in a case where the Court holds that the conduct of the plaintiff in the foreign action, the defendant in the High Court action, is such that it is right and just and equitable that an injunction should be granted. It is enough to say that the jurisdiction of the Court in a case like this undoubtedly exists and ought to be exercised if the Court comes to the conclusion that the defendant in the High Court action, the plaintiff in the foreign action—in this case the Palatine action—acted vexatiously in instituting the proceedings in the foreign action; and from that point of view I have no hesitation in saying that the proceedings taken by O'Reilly in the Palatine action were vexatious and unreasonable to such an extent that the Court ought to exercise the jurisdiction which it plainly possesses to grant an injunction."
The reasoning of Fletcher Moulton and Buckley LJJ was to the same effect.
The application to adduce further evidence
Construction of the Agreement
Section 5(5) of the 1994 Act
"In proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Officer shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought."
"With regard, thirdly, to the agreement between the parties, it must be noted that by that agreement the applicant undertook, inter alia, not to seek registration of the trade mark OMEGA in respect of apparatus industrially 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. However, it is not apparent from the provisions of that agreement that the intervener undertook not to oppose registration of the trade mark OMEGA by the applicant. In any event, without its being necessary to consider the consequences of the agreement for the parties, the fact remains that the agreement is irrelevant to the assessment of the likelihood of confusion in the present case."
"OHIM practice regarding the importance to give to coexistence agreements is so far unsettled. The Opposition Division generally refuses to give weight to private agreements when assessing likelihood of confusion. Such agreements are enforceable in the competent national courts, but the Opposition Division considers that it lacks jurisdiction to interpret and enforce them.
One reason for this is that OHIM's bodies have jurisdiction to examine and weight 'facts', but Article 74(1) CTMR does not recognise a competence to interpret 'deeds'. This explains that coexistence agreements are, as a matter of principle, disregarded where their scope and implications are subject to interpretation. A second reason is that both the CTMR and its Implementing Regulation lack a legal basis for depriving an opponent of locus standi even though an agreement with the CTM applicant provides for such restriction of the right to file oppositions. A third reason is that the relative effect of contracts might be incompatible with the erga omnes effects of opposition (and invalidity) decisions."
"When a party files an opposition or an action in invalidity in breach of a coexistence agreement, the CTM applicant or CTM holder may therefore find it useful to obtain a national court judgment giving a proper interpretation of the agreement and ordering the other to withdraw its action before OHIM."
"The earlier right proprietor's consent to registration of a trade mark by another party is tantamount to the renunciation of the right to oppose the application for registration of the trade mark."