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

This is a further battle in the war between the American company Omega Engineering Incorporated (which I shall refer to as “Engineering”) and the Swiss company Omega S.A. (Omega AG) (Omega Ltd) (which I shall refer to as “Swiss”) over the trade marks OMEGA and Ω. Much of the factual and legal background to the present battle is set out in my judgment on the previous battle dated 28 May 2010: [2010] EWHC 1211 (Ch), [2010] ETMR 49 (“my first judgment”). In the interests of brevity, I shall take my first judgment as read. My decision was upheld by the Court of Appeal in a judgment dated 27 May 2011: [2011] EWCA Civ 645, [2011] ETMR 40. On 1 November 2011 the Supreme Court refused Swiss permission to appeal against that decision.

Like the previous battle, the present battle has two fronts. The first is an appeal by Swiss against a decision of Oliver Morris acting for the Registrar of Trade Marks dated 11 October 2011 (BL O/343/119, “the Decision”). By the Decision the hearing officer dismissed Swiss’ opposition to Engineering’s application number 1571303A (“the 303A Application”). The second is an application by Engineering for summary judgment on a claim for breach of contract commenced by it in this Court.

Common to both fronts are two agreements between Engineering and Swiss. The first agreement is dated 11 April 1984 (“the 1984 Agreement”). The interpretation and effect of the 1984 Agreement was considered by myself and the Court of Appeal in the judgments cited above. The second agreement is dated 2 August 1994 (“the 1994 Agreement”). The interpretation and effect of the 1994 Agreement was considered by Pumfrey J in his judgment on an earlier battle between the parties dated 28 November 2002: [2002] EWHC 2620 (Ch). Engineering was refused permission to appeal to the Court of Appeal against that decision.

The 1984 Agreement is set out in full in my first judgment at [34]. For present purposes the key clauses are as follows:

“[3] OMEGA S.A. agrees to cancel from its United Kingdom Registration No.699057 the following goods (hereinafter known as ‘the excluded 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)’ or a form of wording acceptable to the British Registrar of Trade Marks and stated by him to have the same meaning as the above wording.

[4] OMEGA S.A. undertakes not to use, register, or attempt to register any trade mark consisting of or containing the word OMEGA or the Greek Letter OMEGA, or any element colourably resembling either of the above elements, in respect of the excluded goods.

[5] OMEGA S.A. agrees not to object to the use or registration by OMEGA ENGINEERING of trade marks consisting of or comprising the word OMEGA or the Greek Letter OMEGA, or elements colourably resembling the above elements, in respect of the excluded goods.”

It is not necessary to set out the 1994 Agreement, a number of the clauses of which were quoted by Pumfrey J in his judgment, in full. Recital (F) records that:

“Both parties hereto are desirous of coming to an arrangement for the avoidance of future interference Worldwide between their respective fields of commercial operation under their Rights in respect of Trademarks consisting of or including the word OMEGA and/or the Greek letter Ω or containing elements colourably resembling either of thos[e] two elements”

The key provisions for present purposes are those contained in clause 4:

“Henceforth from the signing of this Agreement and effective in all countries of the World:-

(a)

OMEGA ENGINEERING INCORPORATED undertakes not to use, register or apply to register any trade mark consisting of or containing the word OMEGA or the Greek letter Ω or any mark containing elements colourably resembling either of those two elements in respect of computer controlled measuring, timing and display apparatus, unless intended for science and industry.

(b)

OMEGA SA undertakes not to use, register or apply to register any trade mark consisting of or containing the word OMEGA, or the Greek letter Ω or any element colourably resembling either of those two elements, in respect of:

‘Apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow’.

(c)

OMEGA SA will not object to the use or registration by OMEGA ENGINEERING INCORPORATED of any trade mark consisting of or containing the word OMEGA or the Greek letter Ω or any element colourably resembling either of those two elements in respect of apparatus industrially and/or scientifically employed for measuring or controlling variable parameters such as temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow.”

As long ago as 6 May 1994, Engineering filed application number 1571303 (“the 303 Application”) to register the trade mark set out below (“the Trade Mark”) in respect of a long list of goods in Class 9, including “period timers … ; all for industrial and/or scientific purposes; …”:

For reasons that are unclear, the 303 Application was not advertised for opposition until 16 January 2002. On 16 April 2002 Swiss filed an opposition against the 303 Application, but only in so far as it related to “period timers”. For reasons that are equally unclear, the opposition was still pending at the beginning of 2011.

On 10 January 2011 Engineering applied to divide the 303 Application into two applications, covering “period timers” (303A) and the remainder of the goods in the original specification (303B) respectively. Although Schedule 3 paragraph 10(1) to the Trade Marks Act 1994 provides that an application for registration filed under the Trade Marks Act 1938 which was still pending on the commencement of the 1994 Act shall be dealt with under the 1938 Act, Neuberger J (as he then was) held in Interlego AG’s Trade Mark Applications [1998] RPC 69 that it was possible to divide such an application pursuant to section 41(1)(a) of the 1994 Act and rule 19 of the Trade Marks Rules 1994 (now rule 26 of the Trade Mark Rules 2008) since division was a matter of practice and procedure rather than substantive law. Accordingly, the Register permitted Engineering to divide the 303 Application. That decision is no longer challenged by Swiss. The 303B Application proceeded to registration on 13 May 2011.

On 23 June 2011 Engineering’s trade mark attorneys wrote to the Registry accepting that, in the light of the judgment of Pumfrey J cited above, “it would be fruitless to proceed … with the [303A] application in its present form”. Accordingly, they filed an application on behalf of Engineering to amend the specification of goods of the 303A Application so as to read as follows (“the Goods”):

“Period timers 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).”

In addition, they filed on behalf of Engineering a revised counterstatement contending, in short, that the Goods were “excluded goods” within the 1984 Agreement, and thus Swiss was contractually precluded from opposing the 303A Application in relation to the Goods by clause 5 of the 1984 Agreement. In support of this contention they relied upon the judgment of the Court of Appeal cited above.

The hearing officer recorded in the Decision that it was common ground that the opposition would succeed but for the proposed limitation of the 303A Application to the Goods and the 1984 Agreement. In addition to a number of issues which are no longer live, he went on to consider (i) whether the amendment of the 303A Application to the Goods should be allowed and (ii) whether Swiss was precluded from opposing the 303A Application in relation to the Goods by the 1984 Agreement. He answered both of these questions in the affirmative. He also held that Engineering was not estopped from advancing the interpretation of the term “period timers” for which it contends by virtue of the judgment of Pumfrey J.

On 7 November 2011 Swiss filed an appeal to this Court against the Decision (“the Appeal”). In its appellant’s notice Swiss challenges the hearing officer’s conclusions on each of the three issues identified in paragraph 12 above.

On 16 December 2011 Engineering commenced proceedings in this Court against Swiss for breach of the 1984 Agreement. In its Particulars of Claim Engineering alleges that Swiss has (i) breached clause 4 of the 1984 Agreement by applying to register and/or registering the trade marks listed in Annex 2 to the Particulars of Claim (which has subsequently been amended) and (ii) breached clause 5 of the 1984 Agreement by opposing the 303A Application in relation to the Goods and by appealing against the Decision. Engineering seeks (1) an injunction to restrain Swiss from prosecuting the Appeal, (2) an injunction to restrain Swiss from acting in breach of clauses 4 and 5 of the 1984 Agreement, (3) an order requiring Swiss to amend or abandon the offending registrations and applications and (4) damages for breach of contract.

On 31 January 2012 Engineering applied for summary judgment on its claim for breach of contract. Due to the pendency of the summary judgment application, Swiss has not served a Defence. In its evidence in answer to the application, however, Swiss has exhibited a draft Defence. In the draft Defence and Counterclaim Swiss contends that on the true construction of the 1984 Agreement it is not precluded from objecting to registration of the Goods. It also advances defences of estoppel and acquiescence.

This time I shall begin by considering the Appeal.

Swiss’ first ground of appeal is that Engineering should not have been permitted to amend the specification of goods of the 303A Application in the manner described above for three reasons: (a) it resulted in an impermissible broadening of the specification, (b) it resulted in a specification that was nonsensical and (c) it was contrary to the judgment of the Court of Justice of the European Union in Case C-363/99 Koninklijke KPN Nederland NV v Benelux-Merkenbureau [2004] ECR I-1619 (“POSTKANTOOR”).

Impermissible broadening. It is common ground that it is not permissible to broaden the specification of goods for which a trade mark is sought to be registered during the course of the application: see section 39(2) of the 1994 Act. Counsel for Swiss argued in summary as follows:

Counsel for Engineering argued in summary as follows:

It will be appreciated from these summaries that the key difference between the parties is as to the proper interpretation of the term “period timers”. That raises a question as to the correct approach to the interpretation of a specification of goods or services in a trade mark application or registration.

Under the 1938 Act, the courts’ approach was to give words in specifications of goods their ordinary meaning. Thus in Ofrex Ltd v Rapesco Ltd [1963] RPC 169 (as to which, see my first judgment at [15]) Pennycuick J held that staples were “stationery” according to the ordinary (that is to say, dictionary) meaning of that word.

Under the 1994 Act, this approach has been refined slightly. In British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 (“TREAT”) at 289 Jacob J said:

“When it comes to construing a word used in a trade mark specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade. After all a trade mark specification is concerned with use in trade.”

On this basis, he held that Robertson’s toffee spread, which was a jam-like product, was not a “dessert sauce” even though it could be used as a dessert sauce.

In Avnet Inc v Isoact Ltd [1998] FSR 16 at 19 Jacob J said:

“… definitions of services, which I think cover six of the classifications in the respect of which trade marks can be registered, are inherently less precise than specifications of goods. The latter can be, and generally are, rather precise, such as ‘boots and shoes’.

In my view, specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase.”

On this basis, he held that the internet service provided by the defendant did not constitute “advertising and promotional services”.

In Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd [2000] FSR 267 at 275 Neuberger J (as he then was) said:

“The purpose of skin lightening cream is to alter and, presumably, from the point of view of the consumer, to improve the colour, and hence the appearance, of the consumer's skin. In those circumstances, it appears to me that, as a matter of ordinary language, such cream is within ‘cosmetics’, giving that word its ordinary meaning. As to dry skin lotion, I consider that, as a matter of ordinary language, it would probably fall within ‘toilet preparations’ as well as ‘cosmetics’. I should add that I see no reason to give the word ‘cosmetics’ and ‘toilet preparations’ or any other word found in Schedule 4 to the Trade Mark Regulations 1994 anything other than their natural meaning, subject, of course, to the normal and necessary principle that the words must be construed by reference to their context. In particular, I see no reason to give the words an unnaturally narrow meaning simply because registration under the 1994 Act bestows a monopoly on the proprietor.”

At least in some circumstances, the class of an application may be relevant in interpreting the specification: Altecnic Ltd’s Trade Mark Application [2001] EWCA Civ 1928, [2002] RPC 34 (as to which, see my first judgment at [22], [72] and [75]).

In Thomson Holidays Ltd v Norwegian Cruise Lines Ltd [2002] EWCA Civ 1828, [2003] RPC 32 at [31] Aldous LJ (with whom Waller and Scott Baker LJJ agreed) said, in the context of an issue as to how a specification should be revised to reflect partial non-use:

“Pumfrey J. in Decon suggested that the court's task was to arrive at a fair specification of goods having regard to the use made. I agree, but the court still has the difficult task of deciding what is fair. In my view that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. The court, when deciding whether there is confusion under s.10(2), adopts the attitude of the average reasonably informed consumer of the products. If the test of infringement is to be applied by the court having adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a proprietor has made of his mark. Thus, the court should inform itself of the nature of trade and then decide how the notional consumer would describe such use.”

In Case C-307/10 Chartered Institute of Patent Attorneys v Registrar of Trade Marks [2012] ECR I-0000, [2012] ETMR 42 CIPA applied to register the trade mark IP TRANSLATOR in respect of “education; providing of training; entertainment; sporting and cultural events” in Class 41. The application was refused for the reasons given in a decision issued on behalf of the Registrar reported at [2010] ETMR 32. In summary, the hearing officer decided as follows: (1) on the basis that the wording ‘education; providing of training; entertainment; sporting and cultural activities’adopted the general words of the Class Heading for Class 41 of the Nice Classification, it should be interpreted in accordance with Communication No. 4/03 of the President of OHIM dated 16 June 2003, and thus should be taken to cover not only services of the kind specified by CIPA, but also every other service falling within Class 41 of the Nice Classification; (2) the application therefore covered translation services in Class 41 for which the trade mark IP TRANSLATORcould not be registered under sections 3(1)(b) and (c) of the 1994 Act (equivalent to Articles 3(1)(b) and (c) of Directive 2009/95/EC of the European Parliament and of the Council of 22 October 2009 to approximate the laws of the Member States relating to trade marks (codified version) and Articles 7(1)(b) and (c) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version)) in the absence of evidence establishing that the mark had acquired a distinctive character through use.

On appeal, Geoffrey Hobbs QC sitting as the Appointed Person referred the following questions to the Court of Justice of the European Union:

“In the context of Directive 2009/95/EC of the European Parliament and of the Council of 22 October 2009 to approximate the laws of the Member States relating to trade marks (OJ 2008 L.299 p.25) is it:

(1)

necessary for the various goods or services covered by a trade mark application to be identified with any and if so what particular degree of clarity and precision;

(2)

permissible to use the general words of the Class Headings of the International Classification of Goods and Services established under the Nice Agreement of June 15, 1957 (as revised and amended from time to time) for the purpose of identifying the various goods or services covered by a trade mark application;

(3)

necessary or permissible for such use of the general words of the Class Headings of the said International Classification of Goods and Services to be interpreted in accordance with Communication No. 4/03 of the President of the Office for Harmonisation in the Internal Market of 16 June 2003 (OJ OHIM 2003 p.1647).”

The CJEU answered the first question as follows:

“42.

As regards the requirement of clarity and precision for the identification of the goods and services covered by an application to register a sign as a trade mark, it must be held that the application of certain provisions of Directive 2008/95 depends to a great extent on whether the goods or services covered by a registered trade mark are indicated with sufficient clarity and precision.

43.

In particular, the question of whether or not any of the grounds for refusal or invalidity set out in Article 3 of the Directive apply to the mark must be assessed specifically by reference to the goods or services in respect of which registration is sought (see Koninklijke KPN Nederland, paragraph 33, and Case C-239/05 BVBA Management, Training en Consultancy [2007] ECR I-1455, paragraph 31).

44.

Similarly, further grounds for refusal or invalidity concerning conflicts with earlier rights provided for by Article 4(1) of the directive presuppose the identity or similarity of the goods or services designated by the two conflicting marks.

45.

Moreover, the Court has held that, although it is not necessary to specify in detail the service(s) for which registration is sought, since, to identify those services, it is sufficient to use general wording, the applicant must conversely be required to specify the goods or types of goods to which those services relate by means, for example, of other more specific details. Such details will make it easier to apply the articles of Directive 2008/95 referred to in the previous paragraphs, without appreciably limiting the protection afforded to the trade mark (see, by analogy, Praktiker Bau- und Heimwerkermärkte, paragraphs 49 to 51).

46.

In that connection, it must be recalled that the entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators (Sieckmann, paragraph 49, and Case C-49/02 Heidelberger Bauchemie [2004] ECR I-6129, paragraph 28).

47.

On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks (see, by analogy, Sieckmann, paragraph 50, and Heidelberger Bauchemie, paragraph 29).

48.

On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties (Sieckmann, paragraph 51, and Heidelberger Bauchemie, paragraph 30).

49.

Accordingly, Directive 2008/95 requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection sought.”

The Court went on to answer the second question as follows:

“52.

Since the Nice Agreement was adopted pursuant to Article 19 of the Paris Convention and Directive 2008/95, according to recital 13, was not intended to affect the obligations of the Member States resulting from that Convention, it must be held that that directive does not preclude the competent national authorities from requiring or agreeing that an applicant for a national trade mark should identify the goods and services for which he is seeking the protection conferred by the trade mark by using the Nice Classification.

53.

However, in order to guarantee the effectiveness of Directive 2008/95 and the smooth functioning of the system for the registration of trade marks, such identification must meet the requirements of clarity and precision which, as held in paragraph 49 of the present judgment, are laid down by the directive.

54.

In that connection, it must be observed that some of the general indications in the class headings of the Nice Classification are, in themselves, sufficiently clear and precise to allow the competent authorities to determine the scope of the protection conferred by the trade mark, while others are not such as to meet that requirement where they are too general and cover goods or services which are too variable to be compatible with the trade mark’s function as an indication of origin.

55.

It is therefore for the competent authorities to make an assessment on a case-by-case basis, according to the goods or services for which the applicant seeks the protection conferred by a trade mark, in order to determine whether those indications meet the requirements of clarity and precision.

56.

Accordingly, Directive 2008/95 does not preclude the use of the general indications of the class headings of the Nice Classification to identify the goods and services for which the protection of the trade mark is sought, provided that such identification is sufficiently clear and precise to allow the competent authorities and economic operators to determine the scope of the protection sought.”

The answer to the third question is not relevant for present purposes.

Following the judgment of the CJEU, the President of OHIM issued Communication No. 2/12 dated 20 June 2012, which stated in Part VIII:

“In the case of Community trade mark applications or registrations which, according to the above, are deemed to cover all the goods or services included in the alphabetical list of a certain class or which cover only some of those goods or services, a literal approach, which seeks to give the terms used in those indications their natural and usual meaning, will be consistently used in all proceedings before the Office...”

In YouView TV Ltd v Total Ltd [2012] EWHC 3158 (Ch) at [12] Floyd J summarised the correct approach as follows:

“… Trade mark registrations should not be allowed such a liberal interpretation that their limits become fuzzy and imprecise: see the observations of the CJEU in Case C-307/10 The Chartered Institute of Patent Attorneys (Trademarks) (IP TRANSLATOR) [2012] ETMR 42at [47]-[49]. Nevertheless the principle should not be taken too far. Treat was decided the way it was because the ordinary and natural, or core, meaning of ‘dessert sauce’ did not include jam, or because the ordinary and natural description of jam was not ‘a dessert sauce’. Each involved a straining of the relevant language, which is incorrect. Where words or phrases in their ordinary and natural meaning are apt to cover the category of goods in question, there is equally no justification for straining the language unnaturally so as to produce a narrow meaning which does not cover the goods in question.”

Applying that approach, Floyd J rejected the appellant’s argument that “database programs and databases” should be interpreted as being “free-standing” ones, and held that the specification covered database programs and databases for embedding in apparatus for television and radio reception.

Returning to the present case, counsel for Swiss submitted that the expression “period timers” should be construed literally in accordance with its natural and usual meaning; and that, so construed, it meant something that measured time and time alone. Counsel for Engineering did not dispute that the expression should be given its natural and usual meaning, but argued that there was nothing in the expression “period timer” to exclude a device which performed another function. Furthermore, he submitted that this conclusion was supported by the consideration that multipurpose products may be registered in all appropriate classes.

As counsel for Engineering submitted, it is helpful to test the matter by reference to a real example. The example he particularly focussed on, which is one of a number of examples in Engineering’s evidence and one which was referred to by the hearing officer in the Decision at [19], is Engineering’s product model PTC1632, which looks like this:

The PTC1632 is described by Engineering in its promotional literature as a “timer/temperature controller”. The functions of the product are described as follows:

“Standard Features

√ 1 Second to 100 Hour Timer

…

The PTC1632 combines a timer and an autotuning temperature controller in an innovative way. The display normally alternates between the timer preset and the measured temperature. The time period or setpoint are adjusted by merely pressing the increment or decrement keys when the preset or temperature is displayed. When an external contact closure triggers the timer, the timer output is de-energized while the time value is shown counting down.

A customize mode displays the number of timer cycles, allows the count to be reset, locks/unlocks preset and setpoint changes, and provides simple switching between °F and °C. A separate cycle counter is also included in the instrument’s configuration mode.

The temperature is displayed in 3 digits with °F or °C. Multi-colored LED’s indicate the controller’s status.

…”

Counsel for Engineering submitted that the PTC1632 was a multipurpose product which was both (i) a period timer and (ii) an instrument for scientific or industrial application in displaying temperature. He also submitted that it was proper to both Class 9 and Class 14 in accordance with paragraph (b) of the General Remarks in the 9^th edition of the Nice Classification (as to which, see my first judgment at [24]-[25] and [70]-[71]), which is reproduced in the current 10^th edition.

Counsel for Engineering drew an analogy in this respect with clock radios. As is common ground, clock radios are proper to both Class 9 and Class 14. Furthermore, if one searches for “clock radios” in the Intellectual Property Office’s classification database via Euroclass, the following results are returned:

“Class 9 Radios incorporating clocks

Class 14 Clocks incorporating radios”

Counsel for Engineering argued that a clock which incorporated a radio was still a clock, and that the same was true of a period timer which incorporated a temperature display.

Counsel for Swiss did not dispute that the PTC1632 was a multipurpose product which was proper to both Class 9 and Class 14, but he submitted that it was a “timer/temperature controller”, and not a “period timer”. He argued that a clock which incorporated a radio was different to a clock.

I agree with the hearing officer that products like the PTC1632 are “period timers” even though they have other functions. The PTC1632 is both a period timer and a temperature controller, and therefore is proper to both Class 9 and Class 14. Indeed, one can, if one so wishes, use the PTC1632 purely as a period timer. Accordingly, I consider that the PTC1632 would be identical to “period timers” for the purposes of an infringement claim under section 10(1) of the 1994 Act (Article 5(1)(a) of the Directive). Thus I do not accept that “period timers” are limited to products which measure time and only time.

Nonsensical specification. Counsel for Swiss submitted that the effect of the amendment was to make the specification nonsensical since it was neither fish nor fowl. I can only say that, like the hearing officer, I disagree.

The POSTKANTOOR principle. In POSTKANTOOR the applicant applied to register the word POSTKANTOOR (Dutch for POST OFFICE) in respect of goods and services in Classes 16, 35-39, 41 and 42. The Benelux Trade Mark Office refused registration on the grounds that the sign was descriptive. On appeal, the Gerechtshof te s’-Gravenhage (District Court of The Hague) referred nine questions of interpretation of the Directive to the Court of Justice, of which the eighth was as follows:

“Is it consistent with the scheme of the Directive and the Paris Convention for a sign to be registered for specific goods or services subject to the limitation that the registration applies only to those goods and services in so far as they do not possess a specific quality or specific qualities (for example, registration of the sign ‘Postkantoor’ for the services of direct-mail campaigns and the issue of postage stamps ‘provided they are not connected with a post office’)?”

The Court of Justice answered this question as follows:

“113.

… when registration of a mark is sought in respect of an entire class within the Nice Agreement, the competent authority may, pursuant to Article 13 of the Directive, register the mark only in respect of some of the goods or services belonging to that class, if, for example, the mark is devoid of any distinctive character in relation to other goods or services mentioned in the application.

114.

By contrast, where registration is applied for in respect of particular goods or services, it cannot be permitted that the competent authority registers the mark only in so far as the goods or services concerned do not possess a particular characteristic.

115.

Such a practice would lead to legal uncertainty as to the extent of the protection afforded by the mark. Third parties - particularly competitors - would not, as a general rule, be aware that for given goods or services the protection conferred by the mark did not extend to those products or services having a particular characteristic, and they might thus be led to refrain from using the signs or indications of which the mark consists and which are descriptive of that characteristic for the purpose of describing their own goods.”

The guidance given by the Court of Justice must be seen in the context of the question to which it was addressed, namely whether it was acceptable to restrict the goods or services by reference to the absence of “a specific quality”. What the District Court of The Hague meant by this can be seen from the example it gave, viz. “the services of direct mail campaigns and the issue of postage stamps provided that they are not connected with a post office”. When the Court of Justice referred in its answer to “a particular characteristic”, it must have meant the same thing as the District Court meant by “a specific quality”.

The application of this guidance has caused some difficulty in subsequent cases. In Croom’s Trade Mark Application [2005] RPC 2 at [28]-[29] Geoffrey Hobbs QC sitting as the Appointed Person held that the POSTKANTOOR principle precluded the applicant from limiting a specification of goods in Classes 18 and 25 by adding the words “none being items of haute couture” or “not including items of haute couture”. He went on at [30] to refer to “characteristics that may be present or absent without changing the nature, function or purpose of the specified goods”. Mr Hobbs QC made the same distinction in WISI Trade Mark [2006] RPC 22 at [16].

In Oska’s Ltd’s Trade Mark Application [2005] RPC 20 at [56] I observed en passant when sitting as the Appointed Person that I did not consider that it would be permissible to limit the specification by reference to the applicant’s intended target market.

In MERLIN Trade Mark (BL O/043/05) at [27]-[28] I held when sitting as the Appointed Person held that the disclaimer “but not including the provision of venture capital” was acceptable, because it was not framed by reference to the absence of particular characteristics of the services, but rather it was a restriction on the scope of the services embraced by the specification. Accordingly,

“the effect of [the disclaimer] is simply to excise a particular service from the specification. The mere fact that it is more convenient to express it in negative than positive terms does not make it objectionable.”

I also allowed a second disclaimer “and not including the provision of any such services to the pharmaceutical biotechnological [or] bioscientific sectors” for reasons which I expressed at [29] as follows:

“The position with regard to the second disclaimer is more debatable, but in my judgment the disclaimer does not relate to a characteristic of the services. I consider that there is a distinction between goods and services here. An article of clothing is an article of clothing regardless of whether it is of a particular style or quality and regardless of the identity and proclivities of the intended purchaser. By contrast, services can be defined in part by the recipient of the service. The opponent’s registration is an example of this, since both the Class 35 and the Class 36 specification are limited to services provided to the pharmaceutical biotechnological and bioscientific sectors. In my view POSTKANTOOR does not make it impermissible to define services in this way. That being so, I consider that it makes no difference if the definition is expressed negatively rather than positively.”

In Case R 0746/2005-4 Patak (Spices) Ltd’s Application [2007] ETMR 3 at [28] the Fourth Board of Appeal at OHIM refused to allow a proposed limitation “none of the aforesaid being dart games or darts” to a class 28 specification as offending the Postkantoor principle. I find this decision difficult to follow, since the exclusion related to categories of goods, rather than the characteristics of goods. It appears that the objection may have been down to the fact that the exclusion was negatively worded, but as I explained in Merlin that is a matter of form, not substance, and so should not have been determinative.

In Case T-458/05 Tegometall International AG v OHIM [2007] ECR II-4721 at [25]-[27] the Court of First Instance (now General Court) held, albeit in a different context, that the addition of the words “not of imitation wood” to a specification of goods in Classes 6 and 20 altered the characteristics of the goods in issue rather than excluding a particular category of goods from the specification.

In Case R 1509/2008-2 Couture Tech Ltd’s Application [2010] ETMR 45 at [18] the Second Board of Appeal at OHIM refused to allow the limitation “to be used exclusive in trade and which are moral [sic]”, stating:

“As follows from the OHIM’s Guidelines, Part E, s.3, dated November 2005, the restrictions that limit in terms of a particular use of the mark, price, conditions of use or marketing of the goods, are not acceptable.”

This point did not arise on the applicant’s subsequent appeal to the General Court: Case T-232/10 Couture Tech Ltd v OHIM [2011] ECR II-0000, [2012] ETMR 5.

In Monsoon Accessorize Ltd v Agatha Diffusion (O/024/10) at [64] Professor Ruth Annand sitting as the Appointed Person held that an exclusion of “charm or novelty earrings and novelty cufflinks” from goods in Class 14 offended the POSTKANTOOR principle.

The Registry’s Practice Amendment Notice 02/11 states:

“Example:

Mark: Four by Four - Vehicles; land vehicles; motor vehicles; motor cars and bicycles.

The mark is descriptive of motor vehicles incorporating a four wheel drive capability and objection would be raised in respect of motor vehicles and those terms which contain motor vehicles within their ambit.

The examination report would indicate that the mark is refused in respect of ‘Vehicles; land vehicles; motor vehicles; motor cars’, but is acceptable in respect of ‘Bicycles’.

The broad terms ‘vehicles and land vehicles’ are excluded from acceptance because they can include ‘motor vehicles’ within their scope. However if the applicant were to suggest limiting the broad terms to e.g. ‘Space vehicles, aircraft, ships, locomotives; trailers; 6 wheeled tractor units; bicycles’ then the objection would be overcome.

Alternatively, an exclusion of the objectionable goods may be acceptable providing it excludes a category of goods and not merely a characteristic of those goods (as per guidance provided in the PostKantoor C-363/99)). ‘Four wheel drive’ is a property of the goods claimed and to merely exclude four wheel drive vehicles would not be acceptable. Whereas ‘motor vehicles’ is a category of goods which would include vehicles incorporating a 4 wheel drive capability and an acceptable exclusion would read: ‘Vehicles; land vehicles; but not including motor land vehicles; bicycles’.”

As counsel for Swiss submitted, this guidance is problematic for two reasons. The first, which is incidental to the present case, is that it overlooks the fact that a locomotive may have four wheels each of which is driven. The second, which is germane to the present case, is that it is difficult to see why it would be unacceptable to exclude “four wheel drive vehicles” from the specification. In my view four wheel drive vehicles are a recognised category of goods defined by reference to the nature or function of the goods, and not by reference to a characteristic in the POSTKANTOOR sense.

Against this background, counsel for Swiss submitted that the limitation “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)” contravened the POSTKANTOOR principle because it purported to restrict the specification of goods by reference to whether the goods possessed particular characteristics.

I do not accept that submission for the following reasons. First, if and in so far as the POSTKANTOOR principle depends on the limitation being expressed in negative terms, the limitation in the present case is expressed in positive terms. Secondly, and more importantly, I do not consider that the limitation refers to whether the goods possess particular characteristics in the sense in which the Court of Justice used that term in POSTKANTOOR. Rather, the limitation refers to the functions of the goods. To revert to the analogy discussed above, it is comparable to a limitation of “clocks” to “clocks incorporating radios”. Accordingly, in my judgment it falls on the right side of the line drawn by Mr Hobbs QC in Croom and WISI.

Swiss’ second ground of appeal is that the hearing officer was wrong to conclude that Pumfrey J’s judgment interpreting the 1994 Agreement did not give rise to an issue estoppel as to the meaning of the term “period timers”. Swiss contends that the hearing officer should have held that Engineering was precluded by that judgment from disputing that “period timers” measure time and time alone. Accordingly, it is necessary to consider what the issue was before Pumfrey J and what he decided.

In that battle Engineering had applied to register the trade mark OMEGAMETER for a specification of goods which included “period timers … all for industrial and/or scientific purposes”. Swiss opposed the application so far as it related to “period timers” on grounds raised under sections 5(2)(b) and 5(4)(a) of the 1994 Act. Engineering relied upon the 1994 Agreement as part of its defence to the opposition. The hearing officer held that the application was objectionable under section 5(2)(b), but that by virtue of the 1994 Agreement Swiss could only oppose the application in so far as it extended beyond “computer controlled period timers”. Swiss appealed. On the appeal, Pumfrey J held that on the true construction of the 1994 Agreement Swiss was entitled to oppose the application in relation to “period timers” in its entirety.

His reasons for reaching this conclusion were as follows:

“It seems to me to be clear that if the proviso ‘unless intended for use in science and industry’ is satisfied, then clause 4(a) ceases to have any application. Engineering can apply for what they please, provided that the specification is limited to goods for use in science and industry. The real question is whether, notwithstanding that Engineering can apply under 4(a), [Swiss] can oppose. That depends upon the construction of clause 4(c), to which I shall now turn.

As I have observed, clauses 4(b) and 4(c) are complementary. [Swiss] applies not to register in the [defined class] of goods and will not oppose registration by Engineering in that class …. It is to be noted that measurement of time is not referred to explicitly in clauses 4(b) or 4(c) at all. On the face of it, therefore, clause 4(c) does not prevent [Swiss] from opposing any application by Engineering which is not expressly prohibited contractually by clause 4(a). Can this have been what the parties intended?

… If apparatus of any kind for measurement of time or of elapsed time is to be covered by the prohibition of clause 4(c), it must be as an unidentified variable parameter such as ‘pressure, force, load, vibration, conductivity, liquid level, acidity, humidity, strain and flow’.

What is immediately apparent is that these are all quantities which are measured by transducer. They are quantities which can be measured and controlled in response to their measured value. Time, on the other hand, although a parameter that varies, in the sense that it passes, is not such a quantity. Periods of time can, of course, be pre-set and, to that extent, familiar to anyone with an egg timer, time is a variable parameter. But it is not measured in the sense that the listed quantities are measured.

I do not think that time is a variable parameter within the contemplation of clause 4(c). I am reinforced in this view by two considerations. First, clause 4(c) permits [Swiss] to oppose any mark applied for by Engineering in respect of apparatus otherwise of the kind specified which is not for use industrially or scientifically. A prohibition in respect of time measuring apparatus, regardless of its intended application, obviously directly reflects the centre of gravity of [Swiss’] business. Thus, on the construction which I consider appropriate, the centre of [Swiss’] business, which is concerned with time measurement, is surrounded by a penumbra of goods otherwise than for use in the industrial and scientific context. …”

Counsel for Swiss submitted that it could be seen from this reasoning that Pumfrey J had held that, in the context of a trade mark specification, “period timers” were goods which measured time and time alone. He further submitted that that conclusion was res judicata, and accordingly Engineering was estopped from contending to the contrary.

Counsel for Engineering submitted that all that Pumfrey J had determined was the construction of clauses 4(a) and 4(c) of the 1994 Agreement in the context of the dispute before him. In the case of clause 4(c), he held that it did not prevent Swiss opposing the application in issue for “period timers”. For that reason, Engineering accepted that it could not rely upon clause 4(c) in the present case. No issue regarding multipurpose goods had been raised before Pumfrey J, however, and therefore he had not addressed the position of multipurpose goods. Nor was the 1984 Agreement before him. Accordingly, his conclusion did not determine the issues arising on the Appeal.

In my judgment counsel for Engineering is correct on this point. Pumfrey J did not consider multipurpose goods at all, and therefore he cannot be taken to have determined any of the issues I have to decide.

Counsel for Swiss also sought to rely upon the decision of Professor Annand sitting as the Appointed Person in yet another battle, Omega SA (Omega AG) (Omega Ltd) v Omega Engineering Inc (O/227/05). In that case, Engineering attempted to rely upon clause 4(c) of the 1994 Agreement as a defence to an application by Swiss for a declaration that one of Engineering’s registrations was invalidity registered for “period timers … all for industrial and/or scientific purposes” by limiting the specification to “period timer apparatus industrially and/or scientifically employed for controlling variable parameters such as a temperature, pressure, force, load, vibration, electrical conductivity, liquid level, acidity, humidity, strain and flow”. Professor Annand held at [42] that Engineering was on the horns of a dilemma. Either the revised specification was not a period timer, in which case the amendment constituted impermissible broadening, or it was a period timer, in which case Pumfrey J’s ruling applied.

Again, however, no argument was presented to Prof Annand about multipurpose goods and therefore she did not consider the position of multipurpose goods. Nor did she consider the 1984 Agreement. Thus she did not determine any of the issues I have to decide either.

Swiss’ third ground of appeal is that the hearing officer was wrong to conclude that Swiss was precluded from opposing the 303A Application in relation to the Goods by clause 5 of the 1984 Agreement. Swiss’ primary argument is that the Goods are not a true subset of the “excluded goods” because “period timers” measure time and time alone. For the reasons given above, I do not accept that argument.

In the alternative, Swiss contends that, even if Swiss would otherwise be precluded from opposing the 303A Application in relation to the Goods by clause 5 of the 1984 Agreement, Swiss is permitted to oppose by clause 4(c) of the 1994 Agreement. Swiss argues that the 1994 Agreement, being the later agreement, trumps the 1984 Agreement. I do not accept that argument either. Clause 4(c) of the 1994 Agreement confers no entitlement on Swiss to oppose applications which it is precluded from opposing by clause 5 of the 1984 Agreement. Rather, it imposes an additional, and slightly different, restriction on Swiss’ ability to oppose applications by Engineering.

It follows that the Appeal must be dismissed.

It follows from my conclusions in respect of the Appeal that Swiss has acted in breach of clause 5 of the 1984 Agreement by opposing the 303A Application in relation to the Goods and by appealing against the Decision. It remains to consider Engineering’s claims that Swiss has acted in breach of clause 4 of the 1984 Agreement by applying to register and/or registering the trade marks listed in Annex 2 to the Particulars of Claim. There are a total of 18 such applications and registrations. These fall into a number of groups which raise different issues.

This group is conveniently exemplified by item 1, Community Trade Mark No. 8148891 for the word and symbol combination Ω OMEGA filed on 14 April 1996 and registered on 19 June 2009 in respect of goods in Classes 9 and 14. The Class 14 specification is as follows:

“Precious metals and their alloys and goods in precious metals or coated therewith, jewellery, precious stones, horological instruments, in particular clocks and watches, clock and watch parts, movements for clocks and watches; chronometric instruments, cases for watches (presentation).”

Engineering contends that, in registering this trade mark, Swiss has acted in breach of clause 4 of the 1984 Agreement because the specification of goods overlaps with the “excluded goods”. In support of this contention, Engineering relies on the conclusion in my first judgment, which was upheld by the Court of Appeal, that the definition of the “excluded goods” is not restricted to goods in Class 9, but embraces goods in Class 14. Accordingly, Engineering contends that the specification should be restricted as follows:

“none of the aforesaid goods being [in respect of] 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).”

I have put the words “in respect of” in square brackets because it seems to me that they are unnecessary and inappropriate.

Swiss advances three defences to this claim. First, Swiss contends that there is no overlap between the specification of goods and the “excluded goods”. Its arguments in this respect mirror its arguments with respect to “period timers” on the Appeal. In short, it contends that “horological instruments” and the like measure time and time alone, and do not measure heat or temperature. For the reasons given above in relation to “period timers”, I do not accept that contention.

Secondly, Swiss advances a defence of estoppel. As counsel for Engineering pointed out, however, this defence suffers from precisely the same defects as the estoppel defence which I held to have no real prospect of success in my first judgment at [81]-[82], namely that (i) Swiss cannot point to any representation on the part of Engineering as to the interpretation of the 1984 Agreement and (ii) Swiss has adduced no evidence of any reliance upon any such representation.

Thirdly, Swiss advances a defence of acquiescence. As counsel for Engineering pointed out, however, this defence again suffers from the same defect as the corresponding defence on the last occasion: see my first judgment at [84].

This is Community Trade Mark No. 7320229 for the word OMEGA filed on 15 April 1996 and registered on 16 December 2008 in respect of the same Class 14 specification as item 1. Prior to the commencement of the present claim, however, Engineering had commenced an application for a declaration of invalidity in respect of this registration before OHIM on 24 September 2010. Furthermore, Engineering has relied upon the 1984 Agreement in those proceedings. In Swiss’ draft Defence it is contended that this Court should decline to deal with this matter pursuant to Article 104(1) of Council Regulation 207/2009/EC of 26 February 2009 on the Community trade mark (codified version) (“the CTM Regulation”). Although counsel for Engineering pointed out, correctly in my view, that Engineering’s claim in these proceedings is not a claim falling within Article 96 of the CTM Regulation, and therefore Article 104(1) of the CTM Regulation does not apply, he did not in the end resile from a concession made in his skeleton argument that the claim in respect of item 2 should be stayed pending OHIM’s determination.

This group is conveniently exemplified by item 3, International Trade Mark No. 765501 for the word OMEGA filed on 24 September 2001 in respect of “precious metals and their alloys and goods made of or coated with these materials not included in other classes; jewellery, bijouterie, precious stones; horological and chronometric instruments”. Swiss has sought protection for this both in the UK and at OHIM. Engineering unsuccessfully opposed the application for protection in the UK. At the hearing before the hearing officer on 25 August 2004, Engineering’s trade mark attorney stated that Engineering was not opposing the following parts of the specification: “jewellery, bijouterie, precious stones; horological and chronometric instruments”. Thus the only part of the specification that was opposed was “precious metals and their alloys and goods made of or coated with these materials not included in other classes”. Similar statements were made in relation to items 3A and 4, which were also considered at the same hearing.

In these circumstances, counsel for Swiss submitted that Engineering was estopped from objecting to the parts of the specification it did not oppose at the hearing. Counsel for Engineering had little answer to this argument. In my judgment Swiss has a real prospect of successfully defending the claim in respect of items 3, 3A and 4 on this ground.

Item 12 is Swiss’ application to protect its International Trade Mark No. 997036 for OMEGA in figurative form as a Community Trade Mark filed on 8 August 2008 in respect of goods in Class 9. The specification of goods is qualified by the words “all the aforesaid goods intended for the field of sports”. Swiss contends that this qualification is sufficient to ensure that there is in any event no overlap with the “excluded goods”. Engineering contends that there is still an overlap. On this point I agree with Swiss, since in my view sporting applications are different to scientific and industrial ones. Thus Swiss has a real prospect of successfully defending the claim in respect of item 12.

Item 17 is Swiss’ application to protect International Trade Mark No. 1046399 for OMEGA in figurative form as a Community Trade Mark filed on 26 June 2010 in respect of services in Class 42. Item 18 is Swiss’ application to protect International Trade Mark No. 992381 for OMEGA in figurative form as a Community Trade Mark filed on 27 January 2009 and registered on 11 June 2009 in respect of services in Class 37. Engineering contends that, even though these are for services, they are “in respect of” excluded goods. Swiss disputes this. On this point I again agree with Swiss. Clauses 3-5 of the 1984 Agreement are all about goods. There is no mention of services relating to those goods. If the parties had intended to restrict Swiss’ freedom of action in respect of services, they would have said so. Thus Swiss has a real prospect of successfully defending the claim in respect of items 17 and 18.

For the reasons given above, the Appeal is dismissed and Engineering’s application for summary judgment succeeds in relation to items 1, 6-11 and 13-16 in the amended Annex to the Particulars of Claim, but not items 2-4, 12 or 17-18. (Item 5 was dropped by the amendment.)