Omega SA (Omega AG) (Omega Ltd.) v Mark Robinson and Brenda Robinson

Omega SA (Omega AG) (Omega Ltd.) (the Applicants) sought to register trade marks containing the word "OMEGA" and the symbol "Ω". Mark Robinson and Brenda Robinson (the Opponent) opposed these applications. The dispute concerned whether the Applicants had a genuine intention to use the trade marks in relation to the goods and services specified in their applications, as required by section 59 of the relevant Act. The decision was made by Debrett Lyons, a Hearing Officer of the Trade Marks Hearings.

The primary legal issue before the court was whether the Applicants had demonstrated a genuine intention to use the trade marks at the time of filing their applications, thereby satisfying the requirements of section 59 of the Act. This involved determining whether the Opponent had successfully shifted the onus of proof to the Applicants to establish this intention, and if so, whether the Applicants had discharged that onus. The court also considered the nature of trade mark use, particularly in relation to promotional items, and the evidentiary weight to be given to certain declarations.

The Hearing Officer reasoned that while the filing of a trade mark application is prima facie evidence of an intention to use it, this presumption can be rebutted. The onus of proof shifts to the applicant to demonstrate intention only if the opponent establishes a prima facie case of lack of intention through additional evidence, not merely by raising the section 59 ground. In this instance, the Opponent's evidence, including a declaration from Mr. Hallett, was found insufficient to establish a prima facie case of lack of intention. The court noted that the investigator's report, on which Mr. Hallett relied, was not designed to assess the Applicants' business potential or marketing capacity. Furthermore, the court found that the Applicants' numerous applications and their existing business in food products were not inherently inconsistent with an intention to expand into other classes of goods.

Consequently, the Hearing Officer determined that the section 59 ground of opposition had not been established against two of the applications (1333519 and 1333531). However, one application (1333521) was refused. The two successful applications were permitted to proceed to registration one month from the decision date, subject to any appeal. Costs were apportioned between the parties, with the Opponent receiving full costs for the one successful opposition and the Applicants receiving costs for the two successful oppositions.