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Trade Mark Opposition Decision 0/298/01 TRADE MARKS ACT 1994
IN THE MATTER OF Application No: 2000636
by Ohmega Electronics Products Limited to register a
Trade Mark and
IN THE MATTER OF Opposition No: 48750 by
Omega Engineering Incorporated.
1.
On 4
th
November 1994 Ohmega Electronics Products Limited of Farringdon House, 17 The
Parade, Hatfield, Hertfordshire AL10 0ET applied to register the following trade mark:
These goods and services were specified with the mark, in Class 9, are: Degaussing coils;
cable harnesses; electric plugs, leads, wires and cables.
2.
The opponents are Omega Engineering Incorporated, and their grounds for objection are
under s. 5(2)(b) of the Act, in that they own the registrations recorded in the Annex, and also
s. 5(4)(a), following from the goodwill and reputation acquired by their mark with regard to
electrical connectors, leads, wires and cables. The opponents do not seek refusal of the mark
in toto. Rather, they ask that the application be restricted to certain goods; I will return to this
issue below.
3.
A Counter Statement was provided by the applicants, in which the grounds of opposition are
denied. Both parties ask for costs to be awarded in their favour.
4.
The matter came to be heard on 23
rd
March 2001. The applicants were represented by R
Gallafent of Gallafent & Co, and the opponent by Mr C Morcom QC, instructed by Bromhead
& Co.
THE DECISION
5.
At the beginning of the hearing, Mr Morcom stated:
Basically, the stance we are taking is that we have indicated our willingness to withdraw
the opposition if the applicant accepts the restriction we propose. However, the position is
that if they are not willing to accept that restriction, then we say the refusal of the whole
application is mandatory.. 6.
Mr Morcom was referring to the following statement in the opponents Statement of Grounds:
Ohmega Electronics mark, the subject of Trade Mark Application No. 2,000,636
(OHMEGA ELECTRONICS and Device), and its use in connection with certain plugs,
leads, wires and cables, is likely to cause confusion and association with Omega
Engineerings marks. Accordingly, the application should be restricted to those goods for
which it has established honest concurrent use under Section 7, namely:
Degaussing coils; cable harnesses; electric plugs, leads, wires and cables; all the
foregoing goods being for domestic appliances and motor vehicles.
7.
This is very explicit. It is not, as was suggested at the hearing, grounds for withdrawal of the
opposition (though it might have been that as well), but very clearly the aim of the opposition
as requested of the Registry in applying the Act. Mr Morcom suggests that in doing so - in
following my consideration of the ss. 5(2)(b) and/or 5(4)(a) grounds - I must come to the
conclusion to which they lead, as determined by law and fact, even if that takes me beyond the
restriction the opponents seek above. This is the consequence of what he called the
mandatory effect of these provisions.
8.
After some reflection, I do not think this follows. To do so would amount to an effective
amendment of the opponents Statement of Grounds. It was, of course, open to Mr Morcom
to ask for this at the Hearing and he did not. Had he done so, I would have considered the
request on its merits, following submissions from both parties. However, as this opposition
stands the opponents have circumscribed the perimeter of their opposition - they have chosen
the battlefield on which they mean to fight - and cannot expect it to be enlarged at this stage.
9.
I agree with use of the word mandatory in the sense that there is no discretion under the new
Act, as there was under the old. But I do not think it means I am compelled to augment an
opponents case if the law and facts suggest it will succeed.
10. Of course, it may well be possible that the parties have misunderstood the effect of honest
concurrent user under the new Act, and this misunderstanding informed the approach they
took. I discuss honest concurrent user below. Suffice it to say, here, that Registry practice on
this issue was extant well before this matter began, and was available to both parties. It is not
for me to make up for any misunderstanding, if it existed.
11. Further, I do not think it would be fair to the applicants to expand the Statement of Grounds
now, some three years after the opponents submitted it, when it has remained unchanged
throughout the whole proceedings thus far. Particularly as it was confirmed as their clear and
continuing objective in March 2000 (nearly two years after their opposition was initiated) in a
letter sent by Mr David John Crouch, an agent of Bromhead & Co, acting on behalf of the
opponents (Exhibit DJC 1 to his second Declaration, dated 5
th
May 2000). The letter states:
The differences between the activities of the Applicant and the Opponent are not denied,
and it is indeed for this reason that the Opponent will be happy for the application to
proceed on the basis of the goods set out in paragraph 4 of the original statement of
grounds. However, the application as it stands is wider than this, and it is because of the
range of goods that goes beyond those set out in the aforesaid paragraph 4, that this
opposition has been filed. (Emphasis mine). 12. This is what the opponents asked for, if they win, this is what they will get. It was the raison
d�tre of their opposition.
13. Having dealt with this point, I now turn to the first ground, under s. 5(2)(b). This section
states:
A trade mark shall not be registered if because -
(1) .. ,
(2) it is similar to an earlier trade mark and is to be registered for goods or services identical with
or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark.
14. I will consider, first, the ground of opposition under Section 5(2)(b). It is clear that the
opponents are the proprietors of earlier marks, by virtue of their registrations (see the Annex),
their application (see Annex) and ss. 6(1) and (2) of the Act.
15. Mr Morcom pointed out that the applicants mark was allowed to proceed by the Registry on
the basis of honest concurrent use under s. 7 of the Act. However, as Mr Morcom pointed
out s. 7 ..is not part of the Directive, and what is crucial about section 7 is ...that whereas
under the old law honest concurrent use, if established, gave a right to registration, section 7
does no such thing.... I was referred to s 7:
This section applies where on an application for the registration of a trade mark it appears to the
registrar:
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1),
(2) or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is
satisfied,
but the applicant shows to the satisfaction of the registrar that there has been honest concurrent use
of the trade mark for which registration is sought.
(2) In that case the registrar shall not refuse the application by reason of the earlier trade mark or
other earlier right unless objection on that ground is raised in opposition proceedings by the
proprietor of that earlier trade mark or other earlier right.
16. I was also referred to the words of Mr Justice Walker in Road Tech Computer Systems v
Unison Software (UK) Limited [1996] FSR 805:
Nevertheless there can be only two eventual outcomes to an application - registration or
refusal - and in the absence of any words conferring a discretion on the registrar I think it is
reasonably clear that refusal is mandatory under section 7(2) if the proprietor of the earlier
registered mark objects. 17. Mr Morcom was careful to steer away from the more extreme interpretation of this statement,
and supported the practice of the registry in that ss. 7(1) and (2) provide a procedural
mechanism whereby the registrar need not refuse an application by reason of the existence of
an earlier trade mark if he is satisfied that there has been honest concurrent use. However
where opposition is filed, based on s. 5(2), it is necessary to consider the effect of the honest
concurrent use on the issue of likelihood of confusion: I must appraise the evidence of such in
my decision.
18. This will involve a short detour to consider both parties evidence of use, starting with the
applicants. This arises in one Statutory Declaration by the Managing Director of Ohmega
Electronics Products Limited, Edward James Obee. He brings into the proceedings evidence
submitted to the Registry during the application procedure. The latter is contained in another
Statutory Declaration by Mr Obee dated 25
th
April 1997. In it he says there has been use
under the mark since 1987, when it was designed. In Exhibit EOJ1 are three filers, two
dated by hand 1995 (and thus after the relevant date) but one (again by hand) stated as being
designed for Electrix Exhibition in 1989. This demonstrates the type of goods