Case: Magnavox (Aust) Pty Ltd's Trade Mark (1964) 34 AOJP 2075
Outcome: referred to
is not unreasonable, particularly in an area of technology the subject of rapid change, for an applicant for a trade mark to include within the class of goods for which the trade mark is registered, products which may not be able to be strictly described. The statement of goods should not be construed so narrowly that it fails to include goods clearly within the designated class that have not yet been developed. As was said in Magnavox (Aust) Pty Ltd's Trade Mark (1964) 34 AOJP 2075 at 2078, ' the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered '. The general term "computer peripheral devices" as used is an appropriate term to describe the range of goods marketed by Pioneer KK in the areas of computer and optical technology, given the rate of change and advances in those technologies. Further, as the technology has changed and as it is used, some devices may be internally connected or externally connected to a computer. One example is the DVD drive in a larger or smaller notebook computer. It seems artificial to restrict the description of a category of goods on the basis of a distinction drawn by the definition where the distinction is not drawn in use of the term in the marketplace, where it depends upon the way in which the goods are used, sometimes idiosyncratically, and where the use of a particular device as an internal component or an externally connected device may change as the technology changes. In any event, for the reasons that follow in considering discretionary matters, the distinction is not determinative of the decision regarding whether or not to remove the removal goods from the registrations for the Pioneer KK marks. The specific inclusion of certain computer peripheral devices in the Pioneer KK trade mark registrations Pioneer Computers says that optical devices (including DVD-ROM drives and DVD writers) constitute a separate category of information technology products that comprise a niche market and that they should not be considered as satisfying the range of products encompassed by the general term "computer peripheral devices". As noted above, Pioneer Computers further argues that in the present case, the separate inclusion of various goods (including optical disc drives) in the second Pioneer KK trade mark registration means that these products are not encompassed by the term "computer peripheral devices" as used in the registration. In this case, the inclusion of computer peripheral devices in the description of the goods for which the second Pioneer KK mark was registered seems to have been as a "catch-all" and an expression to encompass goods yet to be developed and so yet to be specifically described. The Explanatory Memorandum does not really assist. Section 101(4) makes it clear that it has been inserted without any attempt to limit or qualify the discretion provided for in s 101(3). The Explanatory Memorandum itself speaks of "clarification". This can either recognise that s 101(4) expands the discretion or that it simply makes it clear which factors could already be taken into account under s 101(3). In my view, use of a trade mark on closely related goods or services could already be taken into account in exercising the discretion under s 101(3) in the unamended section. As I read s 101(3) , the discretion to be exercised is not limited. For the purposes of s 101(3) , account may be taken of use of the trade mark on closely related goods or services, even in cases commencing prior to the introduction of s 101(4). This has particular relevance in the case of goods that are at the forefront of technological change. Justice Dixon (as he then was) said in The Shell Company of Australia Limited v Rohm and Haas Company [1948] HCA 27 ; (1949) 78 CLR 601 at 627 that the basis of a claim to proprietorship in a trade mark so far unused is found in the combined effect of authorship of the mark, the intention to use it on or in connection with the goods and the application for registration. In Magnavox , the Assistant Registrar considered a mark which had not been used across the scope of the goods claimed. In coming to a conclusion as to use across a class of goods, I agree with the Assistant Registrar (at 2078) that ' the rights arising from the registration of a trade mark should not be confined to the stage of technological development of goods specified when the mark was registered '. The relevant date for the exercise of the discretion