Omega Engineering Incorporated v Omega S.A. (Omega AG) (Omega Ltd.)

Trade mark specifications must be construed by their ordinary and natural meaning, assessed in the context of trade and the goods concerned. A product may fall within a specification describing one function even though it performs additional functions. A limitation is permissible where it identifies the functions or category of goods covered, rather than excluding goods possessing a particular characteristic in the sense addressed in POSTKANTOOR. An earlier judgment creates an issue estoppel only on an issue actually determined. Contractual restrictions on opposition must be construed by reference to their wording: a later agreement does not override an earlier restriction unless it does so expressly or by necessary implication.

Omega Engineering Incorporated applied to register a trade mark for “period timers” and amended the specification to identify period timers intended for scientific or industrial applications involving heat or temperature. Omega S.A. opposed the application, relying on the meaning of “period timers”, the POSTKANTOOR principle and an earlier judgment concerning a different agreement.

The defendant appealed the hearing officer’s decision allowing the amendment and holding that the 1984 Agreement prevented the opposition. The claimant also sought summary judgment for alleged breaches of that agreement concerning various trade mark applications and registrations. The central issues were the construction of the specification, issue estoppel, the interaction between the 1984 and 1994 Agreements, and whether the contractual claims could be summarily determined.

1. Appeal. The appeal against the hearing officer’s decision was dismissed. “Period timers” was not confined to products whose sole function was measuring time. Specifications are construed according to ordinary and natural meaning, viewed practically in the context of trade.
2. A multipurpose product can fall within a specification describing one of its functions. The PTC1632 was both a period timer and a temperature controller, and was proper to more than one trade mark class. The amended wording narrowed the specification and did not impermissibly broaden it under section 39(2) of the Trade Marks Act 1994. It was also not nonsensical.
3. The limitation did not offend the POSTKANTOOR principle. That principle concerns restrictions by reference to the absence of a particular characteristic. The present wording identified the functions and intended field of the goods. It therefore fell on the permissible side of the distinction explained in Croom’s Trade Mark Application and WISI Trade Mark.
4. The judgment of Pumfrey J on the 1994 Agreement did not create an issue estoppel on the meaning of “period timers”. It concerned a different dispute and did not consider multipurpose goods or the 1984 Agreement.
5. Clause 5 of the 1984 Agreement prevented Swiss from opposing the amended application. Clause 4(c) of the 1994 Agreement imposed an additional restriction; it did not confer a right to oppose an application which clause 5 prohibited.
6. Summary judgment. Judgment was entered for Engineering concerning items 1, 6–11 and 13–16. The claim concerning item 2 was stayed pending OHIM proceedings. Swiss had real prospects of defending the claims concerning items 3, 3A, 4, 12, 17 and 18. Item 5 had been dropped.

This was a first-instance appeal to the High Court from a hearing officer’s decision dated 11 October 2011. The hearing officer had allowed the amendment, held that the 1984 Agreement precluded the opposition, and rejected the proposed issue estoppel. The High Court dismissed the appeal and determined the related summary judgment application.