Omega Engineering Incorporated v Omega SA (Omega AG) (Omega Ltd) [2010] EWHC 1211 (Ch) (28 May 2010)

Omega Engineering Incorporated v Omega SA (Omega AG) (Omega Ltd) [2010] EWHC 1211 (Ch) (28 May 2010)

The agreement, properly construed, prevents Swiss from objecting to the use or registration of the OMEGA mark by Engineering for the specified goods regardless of class, including Class 14. Swiss's opposition and appeal constitute breaches of contract. Defences of estoppel, variation, or acquiescence have no real prospect of success. The court has jurisdiction to grant injunctive relief, but the issue is academic given the dismissal of the appeal.

Citation
[2010] EWHC 1211 (Ch)
Parties
Claimant and Respondent: Omega Engineering Incorporated; Defendant and Appellant: Omega S.A. (Omega AG) (Omega Ltd)
Jurisdiction
England and Wales
Judgment Date
28 May 2010
Procedural Posture
High Court Chancery Division Appeal and Summary Judgment Application / Appeal From Trade Mark Registry and Summary Judgment on Breach of Contract Claim
Outcome
Appeal dismissed; summary judgment granted for Engineering on breach of contract claim.
Legal Topics
Trade Marks, Coexistence Agreements, Breach of Contract, Summary Judgment, Interpretation of Contracts, Classification of Goods, Injunctions
Intellectual Property Contract Trade Marks Coexistence Agreements Breach of Contract Summary Judgment Interpretation of Contracts Classification of Goods +1 more

Case Brief

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Parties

Omega Engineering Incorporated

Claimant and Respondent

Omega S.A. (Omega AG) (Omega Ltd)

Defendant and Appellant

Procedural Posture

High Court Chancery Division Appeal and Summary Judgment Application / Appeal From Trade Mark Registry and Summary Judgment on Breach of Contract Claim

Legal Issues

  1. 1 Whether the 1984 coexistence agreement between the parties precludes Swiss from objecting to registration of the OMEGA mark in Class 14 for certain goods; Whether Swiss's opposition to registration constitutes a breach of contract; Whether estoppel, variation, or acquiescence prevent Engineering from enforcing the agreement; Whether the court can grant injunctive relief restraining prosecution of the appeal.

Ratio Decidendi

The agreement, properly construed, prevents Swiss from objecting to the use or registration of the OMEGA mark by Engineering for the specified goods regardless of class, including Class 14. Swiss's opposition and appeal constitute breaches of contract. Defences of estoppel, variation, or acquiescence have no real prospect of success. The court has jurisdiction to grant injunctive relief, but the issue is academic given the dismissal of the appeal.

Court Disposition

Appeal dismissed; summary judgment granted for Engineering on breach of contract claim.

Orders

  • Swiss's appeal against the Trade Mark Registry decision is dismissed.
  • Summary judgment granted in favour of Engineering on its breach of contract claim.