Omega SA was a Swiss company that manufactured watches for over 150 years. Omega Engineering Inc was an American company that has manufactured products for measurement of temperature and humidity for about 50 years. The parties had a number of disagreements over use of the OMEGA brand and they entered into a trade mark co-existence agreement in 1984 to set up their mutual brand co-existence. The watch company agreed not to object to goods that involved measuring, signalling, checking, displaying or recording heat or temperature.
In 2007, the engineering company applied to register a trade mark for OMEGA in the UK in classes 9 and 14 on the trade marks register. Class 14 of the register covered several things including watches. It was the application in that class that the watch company officially opposed with the trade marks registry. Whilst the parties were battling it out on that front, the manufacturing company applied to the High Court for summary judgment against the watch company's breach of contract for opposing the trade mark application.
The High Court agreed with the manufacturing company. The court said that the words in the original agreement were sufficiently clear and it did not matter which classes on the register the use or application were in – classes on the register were purely for the registry's administration purposes. It was the specification for which the goods to be used that mattered. The High Court added that someone who had consented to another's use of the trade mark in a particular way could not later oppose that use or registration, unless they agreed something different.
Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of Upload-IT, comments: 'This case shows that courts will enforce trade mark co-existence agreements between businesses that have overlapping brands. Parties should also ensure that the agreements are not specific to any particular class of goods or services but are described in terms of the goods or services themselves. They should also seek to ensure the agreements are future proofed, where possible, because co-existence agreements entered into a long time ago can have an impact many years down the line, as the watch company found out to its cost here.'
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