Omega Engineering Incorporated v Omega SA (Omega AG) (Omega Ltd)

Omega Engineering Incorporated v Omega SA (Omega AG) (Omega Ltd)

The coexistence agreement, properly construed, gave Engineering consent to register the OMEGA mark for the specified goods in any appropriate class, including Class 14. Swiss's opposition to registration in Class 14 was a breach of contract. Section 5(5) of the Trade Marks Act 1994 makes such consent determinative, barring opposition on relative grounds. Swiss's defences of estoppel, variation, and acquiescence had no real prospect of success. The court has jurisdiction to restrain prosecution of the appeal, but the issue was academic given the substantive outcome.

Parties
Claimant/respondent: Omega Engineering Incorporated; Defendant/appellant: Omega S.A. (Omega AG) (Omega Ltd)
Jurisdiction
England and Wales
Judgment Date
28 May 2010
Procedural Posture
Civil (commercial/intellectual Property) / High Court Judgment on Summary Judgment Application and Appeal From Registrar of Trade Marks
Outcome
Summary judgment for Engineering; Appeal by Swiss dismissed.
Legal Topics
Trade Marks, Coexistence Agreements, Summary Judgment, Interpretation of Contracts, Opposition Proceedings
Intellectual Property Contract Law Trade Marks Coexistence Agreements Summary Judgment Interpretation of Contracts Opposition Proceedings

Case Brief

Summary, issues, holding and outcome

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Parties

Omega Engineering Incorporated

Claimant/respondent

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

Defendant/appellant

Procedural Posture

Civil (commercial/intellectual Property) / High Court Judgment on Summary Judgment Application and Appeal From Registrar of Trade Marks

Legal Issues

  1. 1 Whether Swiss breached a coexistence agreement by opposing registration of a trade mark in Class 14; Whether the agreement's consent extended to Class 14; Whether section 5(5) of the Trade Marks Act 1994 is a bar to opposition where consent is given; Whether estoppel, variation, or acquiescence preclude enforcement of the agreement; Whether the court can restrain prosecution of an appeal in these circumstances.

Ratio Decidendi

The coexistence agreement, properly construed, gave Engineering consent to register the OMEGA mark for the specified goods in any appropriate class, including Class 14. Swiss's opposition to registration in Class 14 was a breach of contract. Section 5(5) of the Trade Marks Act 1994 makes such consent determinative, barring opposition on relative grounds. Swiss's defences of estoppel, variation, and acquiescence had no real prospect of success. The court has jurisdiction to restrain prosecution of the appeal, but the issue was academic given the substantive outcome.

Court Disposition

Summary judgment for Engineering; Appeal by Swiss dismissed.

Orders

  • Swiss restrained from prosecuting the appeal (if necessary);
  • Inquiry as to damages directed;