Omega SA v. Omega Engineering, Inc

The present appeal only concerns the definition of the scope of the opposition following the opponents letter of 7 August 2008. This issue was not examined by the Board in its previous decision of 5 August 2010 in Case R0740/2009-1. Contrary to the opponents view, it is clear from that letter that it fully understood the purpose of the Offices letter of 9 June 2008 inviting it to specify against which of the remaining goods in Class 9, the opposition was still directed. Having thoroughly examined the amended list of goods, the opponent knowingly, unconditionally and unequivocally limited the scope of its opposition to the 2nd and 3rd re-inclusions introduced by the applicant by its letter of 18 August 2008. Therefore, it cannot subsequently re-enlarge it by referring to the ‘initially opposed goods. Indeed, the declaration by which following a restriction of the list of goods, the opponent specifies, in reply to an express request from the Office, against which of the remaining goods he maintains his opposition, is a unilateral act. Such a unilateral act produces effects as from the moment it reaches the Office. In various previous decisions between the parties, the Board has persistently reminded that it is the opponents exclusive responsibility and duty to precisely specify, in due time and without ambiguity, against which G&S it actually intends to direct its opposition. The Board has also persistently dismissed the opponents request that the limitation ‘none relating to time or timing should be added at the end of the specification in Class 9, or in the alternative, after every individual goods which could potentially relate to time/timing. Such a limitation would affect goods in Class 9 which were not originally opposed and which must not be restricted nor modified since the opposition originally filed was not expressly directed against them. The appeal is dismissed.