Trade mark decision

BL Number
O/281/05
Decision date
17 October 2005
Appointed Person
Professor Ruth Annand
Mark
OMEGA
Classes
14
Registered Proprietor/Appellant
Applicants for Revocation/Respondent
..
Appeal against the decision of the Registrar’s Hearing Officer in revocation proceedings.

Result

Appeal partially successful. ..

Points Of Interest

  • 1. Genuine use; internal use; use between related companies.
  • 2. Admission of further evidence on appeal.
  • 3. "The relevant buying public …… would perceive a watch with precious stones adorning the face and/or bracelet as an item of jewellery". (see BL O/393/03)

Summary

At first instance (see BL O/007/05) the Hearing Officer had found the applicants for revocation successful in respect of jewellery and clocks and had partially revoked the registration accordingly. The registered proprietor appealed to the Appointed Person, seeking to have the registration restored so as to read “jewellery; horological and chronometric instruments; parts and fittings therefor”. They also applied to introduce further evidence on appeal. Reviewing the decision below the Appointed Person noted that the Hearing Officer appeared to have ignored certain evidence of use (because it related to watches; use of which was not in dispute) and also had not properly understood the relationship between the various parts of the parent company’s group of companies.

In the result the Appointed Person decided to admit the further evidence and also found that the Hearing Officer had erred in failing to take into account the evidence of use on watches, as this provided an important backdrop against which to assess the genuineness of the use in respect of the other items. The Appointed Person therefore decided that the matter should be considered afresh, and that the further evidence should be included in this re-assessment.

Having done so, the Appointed Person found that the proprietor had shown genuine use of the mark in relation to clocks and also genuine use of the mark "on the main items that the public would perceive as falling within the description ‘horological and chronometric instruments’."

Also, in an important comment on her own decision in a related case (see BL O/393/03) Professor Annand said “With hindsight, I should have categorically stated that a significant proportion of the relevant buying public would, in my view, perceive a watch with precious stones adorning the face and/or bracelet as an item of jewellery as well as being a timepiece.”

Taking all this into account Professor Annand decided that the registration should be partially restored so as to cover “jewellery watches and pins; horological and chronometric instruments; parts and fittings therefor”. Both parties having achieved a measure of success, the Appointed Person decided that they should bear their own costs in the appeal. But in view of the lateness of the application she awarded costs to the respondents in the matter of the application to admit further evidence

Full decision O/281/05 PDF document81Kb