Omega Engineering Incorporated v Omega SA (Omega AG) (Omega Ltd)

A coexistence agreement should be construed by reference to its language, purpose and relevant background. A consent to registration of specified goods is not ordinarily confined to a particular trade-mark class where the agreement contains no such limitation. Classification is principally administrative, although the class stated in an application may assist construction where the specification is ambiguous.

Consent under section 5(5) of the Trade Marks Act 1994 is determinative of an objection on relative grounds. The provision was not impliedly repealed when the statutory scheme changed so that relative objections were generally raised by opposition. A party may, in a proper case, obtain an injunction restraining another proceeding in the same court, including an appeal, where that proceeding is pursued in breach of contract.

The claimant sought summary judgment on a claim that the defendant had breached a 1984 coexistence agreement by opposing the claimant’s application to register OMEGA for scientific or industrial temperature-measuring instruments having a time-display function. The defendant also appealed against the Registrar’s dismissal of its opposition.

The disputes concerned the construction of the expression “excluded goods”, the effect of classification under the Trade Marks Act 1994 and the Nice Classification, the relevance of contractual consent under section 5(5), and an application to adduce further evidence. The defendant additionally raised estoppel, variation and acquiescence in response to the summary judgment application.

1. Summary judgment and construction. The defendant had no real prospect of successfully defending the contractual claim. Applying the principles in Investors Compensation Scheme Ltd v West Bromwich Building Society [1998] 1 WLR 896, the agreement was to be interpreted as a reasonable person with the relevant background knowledge would understand it. The expression “excluded goods” was complete and was not implicitly limited to Class 9. The agreement’s purpose was to avoid confusion in the parties’ trading activities, and the undertakings concerning use extended to unregistered marks.
2. The 1984 classification background did not alter that construction. Changes in the Nice Classification meant that the goods could properly fall within both Classes 9 and 14 in 2007. The Registrar’s determination on classification was final under section 34(2) of the Trade Marks Act 1994.
3. Section 5(5). The agreement amounted to consent to registration. Section 5(5) made that consent determinative of the objection on relative grounds. The reasoning in Omega SA v Office for Harmonisation in the Internal Market [2007] ECR II-145 did not justify treating contractual consent as irrelevant. Section 5(5) had not been impliedly repealed by the later procedural changes.
4. Further evidence and equitable defences. Permission to adduce further evidence was refused because the evidence could have been obtained earlier and would not have affected the result. The proposed estoppel, variation and acquiescence defences had no real prospect of success. Silence, without a duty to speak or reliance, did not establish estoppel; mere non-invocation did not vary the agreement or amount to acquiescence.
5. Injunction and disposition. The court had jurisdiction in a proper case to restrain a party from pursuing another proceeding in the same court, including an existing appeal. The issue was academic because the appeal was determined, but the contractual breach would otherwise have justified relief. The application for summary judgment succeeded and the appeal was dismissed.

The judgment determined both the claimant’s summary judgment application and the defendant’s appeal from the Registrar’s decision dated 12 November 2009 (BL O/352/09). The appeal was dismissed.