Although reckoned by some to be a scholar, the IPKat has always had problems remembering which party is which in cases in which the warring faction have the same name. The Chancery Division (England and Wales) decision at the end of last month from Mr Justice Arnold in Omega Engineering Inc v Omega SA and others  EWHC 1211 (Ch) was always going to be a tough job for him.
This was an appeal by Omega the watchmaker against a hearing officer's dismissal of its opposition to an application by Omega the engineering company to register the trade mark OMEGA in relation to "instruments and apparatus intended for a scientific or industrial application in measuring, signalling, checking, displaying or recording heat or temperature and having provision to display the time of day" in Class 14. In 2007 the engineers applied to register the trade mark; the watchmaker objected on a number of relative grounds, pleading earlier registered and unregistered rights in the word Omega for identical and similar goods and claiming, where appropriate, a likelihood of confusion.
Mr Justice Arnold, giving summary judgment in favour of the engineers, dismissed the watchmaker's appeal. In his view
* The hearing officer had correctly decided that "excluded goods" meant the goods as listed in clause 3 of the agreement, regardless of their class.* However, while the Court of First Instance in Case T-90/05 said that a co-existence agreement was irrelevant to the assessment of the likelihood of confusion, this was not so. The Court's reason for saying this was not set out, but one possible reason was suggested that the agreement was not a "fact". This was not so: the existence of an agreement between the parties was a very palpable fact.* The fact that a co-existence agreement was a private right did not mean that it was irrelevant, since an opponent could invoke a private right as a relative ground of objection under Article 8 of the Community Trade Mark Regulation, and Article 52(3) of the same Regulation explicitly stated that a coexistence agreement was relevant to an application for a declaration of invalidity.* It would there be unjust if a party who consented to the registration of a trade mark could successfully oppose the application to register it.* It was unsatisfactory to say that an applicant could apply to a competent national court for an injunction to restrain an opponent from opposing -- even assuming that there was a competent national court which had both subject matter and personal jurisdiction.* Section 5(5) was not repealed, was not inconsistent with subsequent legislation and was in harmony with the Trade Mark Directive itself.