OMEGA mark amendment request denied

In Omega Engineering Inc v Omega SA, the Federal Court of Canada has refused Omega Engineering Inc's request to amend the statement of goods of Omega SA's validly registered trademark. The decision reaffirms the protection and presumptions afforded to a trademark registered under the Canadian Trademarks Act.

Omega SA is the owner of registration TMDA05009 for the word and design mark OMEGA associated, among other things, with "technical and scientific apparatus for electricity, optics, telegraphy, cinema, radio, telephony, … electric photocells". Omega Engineering filed various applications for the trademark OMEGA and the Greek letter 'Ω' for use in association with scientific and industrial clocks and timers used in science and industry. Omega SA opposed those applications and Omega Engineering retaliated by trying to have trademark TMDA05009 expunged or invalidated through various administrative proceedings.

As part of its various cancellation actions against TMDA05009, Omega Engineering applied to the Federal Court to request an order to amend the statement of goods associated with the registration so as to describe accurately what it alleged to be the existing rights of Omega SA. In previous proceedings involving the same parties, Omega Engineering had sought the expungement of TMDA05009 under Section 45 of the Trademarks Act. The Federal Court of Appeal, having determined that Omega SA had met its burden to show use of TMDA05009, had refused Omega Engineering's request to amend the statement of goods: the court did not have jurisdiction to amend a registration since the validity thereof was not in question in such proceedings.

Omega Engineering therefore tried a different approach and presented an application to invalidate TMDA05009 based on Section 57. Omega Engineering argued that the general classification that preceded the statement of goods in TMDA05009 was not accurately descriptive of the goods that followed the general statement. In fact, Omega Engineering suggested that instead of "scientific and technical apparatus", the general classification should be "sport apparatus". Omega Engineering also argued that Omega SA had abandoned its use of the trademark in association with technical and scientific apparatus.

The Federal Court rejected Omega Engineering's application. The court found that Section 57 grants the court the exclusive jurisdiction to strike out or amend any entry on the register on the grounds that it does not accurately express or define the existing rights of the person appearing to be the registered owner of the mark. However, the court concluded that it was not allowed, in a Section 57 application, to find a general classification of goods inappropriate and replace it by another description. In order to amend the registration, the court must find that it is invalid - which the court did not do here.

Furthermore, if the court had agreed to amend the registration, it would have a negative impact on the rights of third parties. When a trademark is applied for, it is published so as to give third parties the opportunity to oppose. If the court simply amended a registration, third parties would not have the possibility to oppose the application as described with the new general classification. The court finally concluded that while Omega Engineering's objection could have been properly raised during opposition proceedings, it could not be entertained in a Section 57 application.

As for the claim of abandonment of the trademark, the court first pointed out that the Federal Court of Appeal had already concluded, in the Section 45 proceedings involving the same parties and the same trademark, that Omega SA had shown use of TMDA05009 in association with the specific goods that were listed in the registration. Omega Engineering, however, argued that even if such use was shown, it did not demonstrate use in association with the general classification that preceded the list of goods. The court refused that argument and reaffirmed that the statement of goods cannot be examined in isolation. Omega Engineering had not met its burden to show that use of TMDA05009 had been abandoned simply because the evidence filed by Omega SA pertained to specific products as opposed to the general classification.

This decision reaffirms the certainties and advantages granted to a registration. It also shows the importance of opposing an application before it is registered, so as to benefit from arguments no longer available when registration is obtained.

France Lessard, Léger Robic Richard LLP, Montreal