Case: Nokia Corporation v Truong (2006) 66 IPR 511
Outcome: cited
The central question arising is whether the term 'consumables' falls within the ordinary dictionary meaning or terms in the specifications of Brother's Australian trade marks, in particular, the terms 'parts', 'accessories' and 'attachments'. The dictionary definition of 'accessory' has been considered in the authorities and has been described as " an additional or subordinate thing; an adjunct, an accompaniment; a minor fitting or attachment ": see Nokia Corporation v Truong (2006) 66 IPR 511 at 516. 66 I accept Brother's submissions that printer drum units are apparatus for the transmission or reproduction of images, and that the categorisation of a printer drum unit as a 'consumable' does not take it outside the description of a 'part', 'accessory' or 'attachment'. The evidence of both parties' witnesses indicates that printer drum units are part of the internal working of printers, facsimiles and multi-function devices. They are called consumables because they are parts or accessories with a limited life span, which is generally shorter than the life span of the machine in which they function. Although printer drum units are not fixed permanently within the machines and are removable for replacement, the machines cannot function without them. Given this essential role of the printer drum units, it is wrong to characterise them on the basis they are not a part of or an accessory to those machines. Accordingly, the proper conclusion is that trade marks 440897, 479964 and 1000137 are registered in respect of Brother's printer drum units, such as the Brother DR-200. I also accept Brother's submission that the cardboard box in which a printer drum unit is packaged is itself a 'good' made of cardboard falling within the scope of both class 16 and the specifications of registered trade mark 479964. Indeed, there was little genuine dispute on this point. 67 However, despite my finding that printer drum units are covered by the specifications of trade marks 440897, 479964 and 1000137 (and cardboard packaging by the specifications of trade mark 479966), in my view, Dynamic Supplies' submission that registered trade mark 1000137 was registered only after the conduct of Dynamic Supplies impugned by Brother, and therefore was not breached by that conduct, is correct. The trap purchases in this case were made in late February and early March 2004, and Brother did not register trade mark 1000137 until 30 April 2004. It is not possible, therefore, for registered trade mark 1000137 to be infringed by Dynamic Supplies' conduct in the same way the remainder of Brother's Australian trade marks have been. 68 For these reasons, I find that both the Brother DR-200 units and Brother DR-200 packaging are goods in respect of which Brother's Australian trade marks are registered, but that trade mark 1000137 has not been infringed by the Dynamic Supplies' conduct. 69 A respondent which uses an applicant's registered trade mark in the course of trade in relation to goods which fall within the scope of the mark's specifications will not infringe the mark if the use was with the consent of the applicant: see s 123 of the Act .