CFI ignores coexistence agreement in OMEGA Case

In Omega SA v Office for Harmonization in the Internal Market (OHIM) (Case T-90/05), the Court of First Instance (CFI) has dismissed an appeal against a decision to uphold an opposition against the registration of the combined figurative and word mark OMEGA.

There are numerous instances in which trademark law interfaces with contract law. One such instance is with respect to the licensing of trademarks (see Article 8 of the First Trademarks Directive (89/104/EEC)). Another example is the drafting of trademark delimitation agreements. Recently, in a Community trademark prosecution case, aside from the usual arguments on the likelihood of confusion or lack thereof, the parties attempted to rely on a coexistence agreement. The applicant argued that the opposition should be rejected because of a contractual undertaking not to oppose the application, while the opposing party argued that the applicant had undertaken not to seek registration of the contested mark.

In the case at hand, Omega SA, the famous watchmaker, applied to register the combined figurative and word mark OMEGA (the word 'omega' accompanied by the symbol of the Greek letter omega). Omega Engineering Inc, a US company, opposed the application. Specifically, Omega Engineering objected that the application violated the terms of a coexistence agreement under which the watchmaker had undertaken not to seek registration of the trademark OMEGA for certain products covered by the application. Conversely, Omega SA argued that the coexistence agreement authorized it to register the contested mark.

The Opposition Division of OHIM upheld the opposition on the grounds of likelihood of confusion alone, but did not consider the coexistence agreement between the parties. Omega SA appealed to the CFI, which dismissed the appeal. In doing so, the CFI explicitly ignored the coexistence agreement, stating that "[t]he agreement is irrelevant to the assessment of the likelihood of confusion in the present case". In other words, should Omega SA wish to enforce its interpretation of the coexistence agreement, it will have to resort to contractual remedies and to the law courts.

The Community Trademark Regulation (40/94) does not list contractual undertakings as grounds for refusing or granting trademark rights. A trademark prosecution is not the proper avenue for the potentially complicated legal or evidentiary issues that a contractual dispute may bring to the fore.

Peter Skoglund, Advokatfirman Delphi & Co, Stockholm