Omega Engineering Incorporated v Omega S.A. (Omega AG) (Omega Ltd.)

Omega Engineering Incorporated v Omega S.A. (Omega AG) (Omega Ltd.)

The amendment to the trade mark specification did not impermissibly broaden the scope, was not nonsensical, and did not contravene the POSTKANTOOR principle. Multipurpose goods can fall within 'period timers'. Prior judgments did not create issue estoppel on the present issues. Swiss was contractually precluded by the 1984 Agreement from opposing the application and had breached the agreement by certain registrations and oppositions.

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 Dispute and Breach of Contract Claim / Judgment After Appeal and Summary Judgment Application
Outcome
Appeal dismissed; summary judgment granted in part for breach of contract claim.
Legal Topics
Trade Marks, Breach of Contract, Summary Judgment, Estoppel, Specification Amendment, Issue Estoppel
Intellectual Property Contract Trade Marks Breach of Contract Summary Judgment Estoppel 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 Dispute and Breach of Contract Claim / Judgment After Appeal and Summary Judgment Application

Legal Issues

  1. 1 Whether amendment to trade mark specification was permissible or impermissibly broadened the scope
  2. 2 Whether the amended specification was nonsensical
  3. 3 Whether the POSTKANTOOR principle was contravened

Ratio Decidendi

The amendment to the trade mark specification did not impermissibly broaden the scope, was not nonsensical, and did not contravene the POSTKANTOOR principle. Multipurpose goods can fall within 'period timers'. Prior judgments did not create issue estoppel on the present issues. Swiss was contractually precluded by the 1984 Agreement from opposing the application and had breached the agreement by certain registrations and oppositions.

Court Disposition

Appeal dismissed; summary judgment granted in part for breach of contract claim.

Orders

  • Swiss's appeal is dismissed.
  • Summary judgment for Engineering in respect of items 1, 6-11, and 13-16 of the amended Annex to the Particulars of Claim.