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:

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:

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

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”):

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:

Correctly interpreted, the term “period timers” referred to goods whose sole function was timing.

The Goods were multipurpose goods which had an additional function in addition to timing, in particular measuring temperature.

It followed that the effect of the amendment was to broaden the specification so as to embrace goods which it did not previously include.

Counsel for Engineering argued in summary as follows:

Correctly interpreted, the term “period timers” referred to goods with a timing function whether those goods had another function or not. Thus it embraced both single purpose goods (period timers with no other function) and multipurpose goods (period timers with another function).

Swiss was correct to say that the Goods were multipurpose goods which had an additional function in addition to timing, in particular measuring temperature.

It followed that the effect of the amendment was to narrow the specification. Whereas previously the specification embraced both single purpose goods and multipurpose goods, now it was restricted to multipurpose goods.

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:

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

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

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:

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 TRANSLATOR could 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:

The CJEU answered the first question as follows:

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

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

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:

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:

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:

The Court of Justice answered this question as follows:

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,

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:

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:

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:

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:

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:

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:

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.)