Omega Engineering Incorporated v Omega S.A. (Omega AG) (Omega Ltd.) [2012] EWHC 3440 (Ch) (30 November 2012)

Omega Engineering Incorporated v Omega S.A. (Omega AG) (Omega Ltd.) [2012] EWHC 3440 (Ch) (30 November 2012)

The amendment to the specification did not constitute impermissible broadening, was not nonsensical, and did not contravene the POSTKANTOOR principle; multipurpose goods can be period timers. Issue estoppel did not apply as previous judgments did not address multipurpose goods. Swiss was contractually precluded from opposing the application and certain registrations by clause 5 of the 1984 Agreement. Swiss breached contract by opposing and appealing against registration and by registering/applying for certain marks overlapping with excluded goods.

Citation
[2012] EWHC 3440 (Ch)
Parties
Claimant and Respondent: Omega Engineering Incorporated; Defendant and Appellant: Omega S.A. (Omega AG) (Omega Ltd)
Jurisdiction
England and Wales
Judgment Date
30 November 2012
Procedural Posture
Trade Mark Appeal and Summary Judgment Application / Appeal and Summary Judgment
Outcome
Appeal dismissed; summary judgment granted in part.
Legal Topics
Trade Marks, Breach of Contract, Estoppel, Acquiescence, Specification Amendment, Issue Estoppel
Intellectual Property Contract Trade Marks Breach of Contract Estoppel Acquiescence Specification Amendment Issue Estoppel

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

Trade Mark Appeal and Summary Judgment Application / Appeal and Summary Judgment

Legal Issues

  1. 1 Whether amendment to trade mark specification constituted impermissible broadening
  2. 2 Whether the amended specification was nonsensical
  3. 3 Whether the POSTKANTOOR principle was contravened

Ratio Decidendi

The amendment to the specification did not constitute impermissible broadening, was not nonsensical, and did not contravene the POSTKANTOOR principle; multipurpose goods can be period timers. Issue estoppel did not apply as previous judgments did not address multipurpose goods. Swiss was contractually precluded from opposing the application and certain registrations by clause 5 of the 1984 Agreement. Swiss breached contract by opposing and appealing against registration and by registering/applying for certain marks overlapping with excluded goods.

Court Disposition

Appeal dismissed; summary judgment granted in part.

Orders

  • Swiss's appeal against the Registrar's decision is dismissed.
  • Engineering's application for summary judgment succeeds in relation to items 1, 6-11, and 13-16.