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IP Cases & Commentary – Details

29 July 2010

UK High Court Upholds OMEGA Co-existence Agreement

Omega Engineering Inc v Omega SA

The American engineering company Omega Engineering Inc and the Swiss watchmaker Omega SA both operate under the trade mark OMEGA.

The parties had signed a co-existence agreement regulating their respective uses of the name and prohibiting one party from objecting to use and registration of the OMEGA name by the other in certain defined circumstances.

Specifically, the Swiss company had agreed not to object to use or registration by the American company of OMEGA in respect of the following goods:

Instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature (including such having provision to record heat or temperature over a period of time and/or to display the time of day).

The American company applied for a UK trade mark in respect of the above goods in class 14. The Swiss company opposed the application, relying on earlier rights in OMEGA in class 14. The American company asserted that the opposition should be rejected on the basis that signature of the agreement by the Swiss company amounted to consent to their application under Section 5(5) of the UK Trade Marks Act 1994.

The Swiss company argued that on proper construction of the agreement, their agreement not to object should only apply to applications made in class 9 and that, in any event, private agreements were irrelevant to an objection on relative grounds.

The High Court found that the agreement concerned use of the marks in trade, so to interpret the relevant goods by reference to the classification system would be nonsensical.

The court also dismissed the assertion that private agreements were irrelevant to oppositions on relative grounds. The court noted that in such proceedings, the examiner was limited to examination of the ‘facts, evidence and arguments’ but found the existence of an agreement to be a ‘very palpable fact’ which could certainly be taken into account

Following this decision, it seems clear that the UK High Court will uphold the terms of trade mark co-existence agreements properly concluded between two parties. However, it is less clear whether OHIM will take such agreements into account, as there is no equivalent provision regarding consent for opposition proceedings, although 53(3) does provide that a CTM may not be declared invalid where the proprietor of the earlier right has consented to the later registration.

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