Trade mark decision

BL Number
O/154/08
Decision date
4 June 2008
Hearing Officer
Dr L Cullen
Mark
OMEGA.CO.UK
Classes
09, 14, 16, 35, 37, 40, 41
Applicant
Omega Engineering Inc
Opponent
Omega Engineering Inc
Opposition
Sections 5(1), 5(2)(a) & (b), 5(3) & 5(4)(a)

Result

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

Points Of Interest

  • As described.

Summary

The opponent withdrew the grounds under Sections 5(1) and 5(2)(a) prior to the hearing and conceded at the hearing that if it could not succeed on the Section 5(2)(b), it would be in no better position under Section 5(3) and 5(4)(a).

These parties have had previous disputes and indeed signed a co-existence agreement on 2 August 1994. However, the two sides appear to have different views as to effect of that agreement and disputes continue. In this case Classes 9, 14, 37 and 40 were involved at the outset but the applicant deleted Class 14 from its application and made certain changes to its Class 9 specification. However, the dispute continued in respect of Classes 9, 37 and 40.

The opponent relied upon registrations of the marks OMEGA and OMEGA and device in Classes 9, 37 and 42 and satisfied the Hearing Officer as regards the proof of use provisions where appropriate. The applicant also filed evidence in support of its application.

Under Section 5(2)(b) the Hearing Officer compared the respective marks and concluded that as the word OMEGA appeared in all the marks they must be considered very similar. The Hearing Officer went on to compare the respective specifications in detail and excluded certain goods from the Class 9 specification of the applicant and certain services from Classes 37 and 40.

Estoppel was a major discussion point between the parties because of the existence of the 1994 agreement. The Hearing Officer concluded that the agreement allowed the parties to consider matters on a case by case basis and if they considered it appropriate then they can take action, including opposition, to protect their own area of activity. Thus in respect of the measurement of time goods and services the Hearing Officer found that the opponent was not estoppel. It was, however, estoppel in relation to the measurement of distance goods and services.

Overall the Hearing Officer considered that the opponent was successful to a signification degree and awarded it costs from the Registrar’s scale of costs.

Full decision O/154/08 PDF document256Kb