Trade mark decision

BL Number

O/211/04

Decision date

15 July 2004

Hearing officer

Mr D Landau

Mark

OMEGA

Classes

09

Registered Proprietor

Omega Engineering Incorporated

Applicants for a declaration of invalidity

Omega SA (Omega AG) (Omega Ltd)

Application for Invalidation

Section 47(2)(a) (citing Sections 5(2) (b)) and Section 47(2)(b) (citing Section 5(4)(a)) (*an objection under S.3(6) was not pursued and the Hearing Officer made no finding under S.5(1) and 5(2)(a)).

Result

Application for partial invalidation, successful.

Points Of Interest

• 1. Invalidation; Material date; specifications of the earlier right at that date.
• 2. Acquiescence.

Summary

The registration in suit dated from 1993 and had proceeded to registration in 1999 on the basis of honest concurrent use. The specification of goods was very extensive. The application for invalidation, however, was directed solely at "period timers for industrial and/or scientific purposes". The pleadings included reference to an agreement between the parties, revocation actions and allegations of consent. The agreement had been considered in a High Court action ([2002] EWHC 2620 (Ch)). In preliminary rulings the Hearing Officer stated that the agreement did not prevent the applicants from seeking invalidation, and an earlier failure to object had not amounted to consent.

The Hearing Officer then proceeded to a consideration of the grounds under Sections 5(2)(b) and 5(4)(a). The marks were highly similar and the goods identical. There existed a likelihood of confusion and the application under Section 5(2)(b) succeeded accordingly. The Hearing Officer went on to rule that even had the applicants' partially revoked registrations been the appropriate basis for objections at the material date they would still have included similar goods and the application would therefore have succeeded.

The length of time which had elapsed between the application for registration and the application for invalidation based on Section 5(4)(a) might have been an important factor had the evidence shown use which "could be conflated with the specification of the registration and the sign of the registration", said the Hearing Officer, but the evidence provided had not shown this. The application under Section 5(4)(a) succeeded also.

The registration was therefore cancelled in respect of period timers.