Trade mark decision

BL Number
Decision date
14 January 2002
Hearing Officer
Mr M Reynolds
Omega Engineering Inc
Omega SA (Omega AG) (Omega Limited)
Section 5(2)(b) & 5(4)(a)


Section 5(2)(b) - Opposition partially successful

Section 5(4)(a) - No formal finding

Points Of Interest

  • 'State of the register' evidence is of no more assistance to the tribunal where the applicant is the proprietor of another mark on the register then if it was a third party mark. Use of that mark, however, may be of assistance.


The opponents based their opposition on their own OMEGA marks; however, their objection was to only one item in the lengthy specification in the application; namely 'period timers'. At the hearing the applicants drew attention to an earlier registration, in their name, of the mark OMEGA in which the offending item appeared in the specification. The Hearing Officer, however, considered that this was 'state of the register' evidence, and did not create a bar to the present opposition. Use of the applicants' mark, on the item concerned, would be a factor for consideration however.

The Hearing Officer found that identical goods were involved and the marks were confusingly similar. A likelihood of confusion existed, therefore and the Section 5(2)(b) would succeed, subject to a consideration of the defence the applicants claimed by reason of the existence on an Agreement between the parties. This Agreement was part of an attempt by the parties to settle their differences; there was a history of past and on-going disputes between them in a number of jurisdictions.

After a detailed analysis of the Agreement the Hearing Officer concluded that it allowed the applicants to use and register the mark in respect of computer controlled timing apparatus provided it was intended for use in science or industry. He allowed the application to proceed subject to an appropriate amendment

Full decision O/013/02 PDF document50Kb