Omega: have we heard the last word on the last letter?

Next target for watchmakers?
Perhaps, if it makes cats go on time ..

With so much exciting copyright and patent news flooding into his inbox and colouring his Outlook, the IPKat can forgive himself for neglecting to bring the attention of his readers the latest -- and ideally the last -- round of a dispute which in his opinion was not worth letting anywhere near a court.  This was the tussle between two wannabe alpha males in the IP community over the talismanic trade mark OMEGA, posted on the excellent and sadly impoverished BAILII website as Omega SA v Omega Engineering Incorporated [2011] EWCA Civ 645.

What happened that should make this Kat say such harsh things?  The story goes like this. Omega SA, a long-established watchmaker, was the proprietor of the UK registered trade mark for the word OMEGA for "horological and chronometric instruments” in Class 14. Omega Engineering, a manufacturer of scientific instruments such as thermometers [Merpel thinks thermometers are instruments of torture, recalling how they are administered to cats ...], was also called, er Omega, and used the same name in trade.

In 1984 the parties very sensibly entered into a coexistence agreement. Under clause 5 of that agreement Omega SA agreed not to object to the use or registration by Delaware-registered Omega Engineering of any trade marks which used the word OMEGA in respect of what were referred to as "excluded goods". By clause 3 of the agreement, the term "excluded goods" was defined as meaning "instruments and apparatus intended for scientific or industrial application in measuring ... or recording heat or temperature (including such having provision to ... display the time of day)".

Omega Engineering subsequently applied to register the word OMEGA as a trade mark for various goods in Classes 9 and 14. Omega SA opposed this application unsuccessfully and then appealed to the High Court. In response, Omega Engineering brought proceedings against Omega SA for breach of contract -- the contract in question being the 1984 coexistence agreement.

At trial Mr Justice Arnold awarded summary judgment to Omega Engineering, finding that there was no express reference in the 1984 agreement which limited the excluded goods to "goods in Class 9" as Omega SA had argued, since the exclusion of goods was achieved by reference to the goods themselves and not to the Class or Classes in which a trade mark for those goods might be registered. Moreover, there was no room in the express terms of the agreement for the implication of such a term.

Omega SA appealed and submitted that the term "excluded goods" only covered those goods in Class 9; on this basis it was entitled to object to Omega Engineering's application to register the mark in respect of Class 14 goods. Late last month the Court of Appeal for England and Wales (Lord Justice Mummery, Lady Justice Black and Sir John Chadwick) agreed that the appeal should be dismissed.

According to the Court of Appeal, this action concerned a contract the function of which was to demarcate the respective fields of goods which were, at the time the contract was entered into, marketed by parties which were using similar marks for different goods. The action was not a trade mark dispute over the classification of goods in a registration or use context. The appeal therefore turned on the intention of the parties as expressed in the wording of the 1984 agreement.

Turning next to Clauses 3 and 5, the Court held that there were two key bases for their construction of the contract. First, neither clause expressly referred to either Class 9 or Class 14 of the classification scheme, which rather suggests that they weren't thinking Nice thoughts. Secondly it was not necessary, for the purposes of business efficacy, and therefore not justified, for the Court to imply references to those Classes into the agreement.  This being so, Arnold J had been right to reach the conclusion which he had reached and his reasoning was more than sufficient to justify his conclusion that Omega SA had acted in breach of contract by objecting to the registration by Omega Engineering of the word mark OMEGA for goods which had been accorded to that company by the agreement.

There's something curious about this case, says the IPKat.  Usually, when a coexistence agreement (or an alleged coexistence agreement) between a European business and a US one, it's the European entity which says they're agreed and the American one which causes all the trouble (the WWF, Prudential and Apple disputes all reflect this tendency) -- but this time it's the other way round, with the Swiss party seeking to ruffle the feathers of a coexistence agreement which the American party stand by in its originally agreed form. Don't be silly, says Merpel, how can you ruffle the feathers of an agreement!

Omega here
Omega Three here (for people who take themselves seriously) and here (for people who don't)