Omega SA v. Omega Engineering, Inc (R0843/2009-1)

The appeal only concerns the issue of the scope of the opposition insofar as G&S in Classes 9 and 37 are concerned. In the opponents view, the actual list of the contested goods was broader and, as a result, the OD should have refused the application also for other G&S in Classes 9 and 37. The OD defined the scope of the opposition on the basis of the opponents letter of 6 October 2008, without examining whether the list of G&S mentioned in the opponents letter of 6 October 2008, corresponded to the list of the initially opposed G&S, as defined in the notice of opposition. In this case, the opponent expressly indicated, in the notice of opposition, that its opposition is directed against only ‘part of the goods G&S applied for and the G&S against which its opposition was directed were clearly and exhaustively indicated (‘namely), by selecting, within the list of goods applied for, those goods against which it directed its opposition. Furthermore, on various occasions, the opponent confirmed the list of contested goods upon request of the OD. It would be in breach of those Rules and the applicants right of defence, if the Office were to broaden the scope of the opposition, by considering as validly opposed, not only those goods expressly indicated by the opponent, but also broader categories which were not included by the opponent in the list of contested G&S, on the mere assumption that these general categories might eventually include, or encompass, some of the actually opposed goods or services, or other G&S which might be similar to the ones opposed. The opponent ought to have been fully aware and particularly careful in selecting against which specific goods and services, or wider categories of goods and services, it was directing its opposition. Had it considered that it should direct its opposition against wider categories, because they might include goods of its interest, or against products or services which may overlap with them, it should have expressly mentioned them in the exhaustive list of goods and services (‘namely) against which it directed its opposition. Thus, in this case, while there might be some apparent contradictions between the list of goods in Classes 9 and 37 which have been successfully opposed and some other goods in the same classes which were not opposed and which have been accepted for registration, these contradictions exclusively stem from the opponents acts or rather from the opponents failure to include the goods or categories of goods mentioned in its statement of grounds of appeal, in the exhaustive list of opposed goods, contained in its notice of opposition and confirmed in various occasions. The opponent's claim can only be upheld in respect of apparatus for display of data. These goods are clearly identical to equipment for displaying data although in different wording. Even if the opponent did not mention both wordings, this is clearly due to a material error on its side, since it would be inconsistent to direct its opposition against equipment for displaying data, only, and not against the identical but differently worded goods apparatus for display of data. The applicant itself could not have failed to notice that this omission was merely a material mistake made by the opponent, and therefore cannot complain of a violation of the principle of legal certainty or of its rights of defence. Therefore, the opponents claim in respect of those particular goods can be upheld. The opponent's claim can also be upheld in respect of apparatus for transmitting data. These goods are clearly identical to data transmission equipment although in different wording. For the remaining goods, the list of refused G&S as stated by the OD is correct. The appeal is partly upheld.