mdroth/huggingface-course_section-5_zst huggingface dataset:
Case: Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331
Outcome: considered
expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. In Campomar , the Full Court was dealing with cosmetic and perfume products sold by reference to the word "Nike". Justice Sackville, with whom Lehane J agreed, concluded that it was sufficient for Nike International to be a person aggrieved that, by reason of an established reputation in one field, the sporting field, the public would be likely to think that the appellants' cosmetic and perfume products had Nike International's approval or sponsorship. This was not reversed on appeal. The question whether computers and associated products on the one hand and the goods sold by Pioneer KK under the Pioneer KK marks on the other are the same class of goods or a similar class of goods is answered differently by the parties when considering whether Pioneer Computers is a person aggrieved and whether the public considers that the goods are sufficiently similar to give rise to possible confusion. In considering the issue of "person aggrieved", Pioneer KK submits that Pioneer Computers is only a person aggrieved for the category of computers (and services in relation to these). Pioneer KK submits that Pioneer Computers is not a person aggrieved in respect of any of the other removal goods and removal services, including computer peripherals, which Pioneer Computers does not supply under its PIONEER mark. That is, Pioneer KK submits that care should be taken to subdivide the goods and services within the registered classes to consider which category is actually sold.
Case: Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505
Outcome: cited
Computers submits that the date at which the Court should consider the facts relevant to the exercise of discretion under s 101(3) is the date at which the non-use is to be determined, namely, the expiry of the relevant period or, alternatively, the date at which the removal applicant must establish that it is a person aggrieved, namely the date of the non-use application. There is no material difference between those dates. Pioneer Computers accepts, however, that events after the relevant date may cast light on earlier circumstances ( Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 at 509). While Pioneer Computers submits that the time to consider any confusion is the expiration of the relevant period, it concedes that this is, in a sense, ' artificial ', particularly given the length of time between the relevant period and the hearing of these proceedings. Pioneer KK says that the relevant date for a passing off case is the beginning of the conduct complained of. The discretion to maintain a trade mark registration must, Pioneer KK submits, take into account whether anyone would be deceived if the Pioneer KK marks remain on the Register in their current state or are removed from the Register insofar as the removal goods and the removal services are concerned. The date of that assessment is, Pioneer KK contends, the date of hearing, although confusion leading up to that date would also be relevant.
Case: E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd (ACN 008 596 370) [2008] FCA 934 ; (2008) 77 IPR 69
Outcome: referred to
Australia is a wholly owned subsidiary of Pioneer KK. The use of the marks indicates a connection in the course of trade with the registered proprietor of the marks, Pioneer KK. It cannot be said that the use of the marks by Pioneer Australia is somehow deceptive by indicating a different origin of the goods (see also E &amp; J Gallo Winery v Lion Nathan Australia Pty Ltd (ACN 008 596 370) [2008] FCA 934 ; (2008) 77 IPR 69 at [102] ). The products sold by Pioneer Australia were created and supplied by or on behalf of Pioneer KK. That is, the quality control of manufacture was exercised by the Japanese company. The exercise by Pioneer KK of quality control over goods and services dealt with or provided in the course of trade by its subsidiary, Pioneer Australia, is sufficient for me to conclude that use of the Pioneer KK marks by Pioneer Australia was under the control of Pioneer KK and authorised by it. While the non-use applications filed by Pioneer Computers were defective insofar as the ground in s 92(4)(a) is concerned, I will briefly consider the issue of intention to use the Pioneer KK marks. I note that intention to use refers to intention as at the date of filing of the application for registration. Intention to use the Pioneer KK marks with respect to computers
Case: E &amp; J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005 ; (2008) 78 IPR 334
Outcome: cited
Computers relies upon the requirement under the Act and Regulations (s 27(3) of the Act and Regulations 4.4(2) and 4.4 (6)) which require a trade mark applicant to specify the goods and/or services in respect of which it is sought to register the trade mark and proscribes the use of expressions such as "all goods" or "all services"; the goods or services must be indicated by name. Pioneer Computers submits that it follows from s 100(1) of the Act, which requires that a trade mark owner establish use in relation to the particular goods and/or services for which removal is sought, that there is a clear policy not to allow use for one good or service to stand as use for another good or service even though they fall within a class or broad description ( Moove (No 2) at 272). Pioneer KK nominated the goods for which it sought and obtained registration. In the second Pioneer KK registration, the goods were specified by the general term "computer peripheral devices" followed by list of specific devices which differ from each other, for example, printers and keyboards. The specification thus encompasses the specific goods nominated and any goods that can be described as "computer peripheral devices" that are not otherwise specified. Pioneer Computers submits that Pioneer KK cannot, by establishing use on optical disc drives and jukeboxes, rely upon that use of the mark for the other goods encompassed by the general term "computer peripheral devices". Rather, it says that the term is residual and covers goods not otherwise specified in the trade mark registration. Pioneer Computers submits that DVD drives and DVD writers fall in a distinct niche market segment that is laser and optical drives which have been specifically provided for in the second Pioneer KK trade mark registration. It submits that Pioneer KK is not entitled to a monopoly for the additional term "computer peripheral devices" for which, it says, no use has been established. The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal ( E &amp; J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005 ; (2008) 78 IPR 334 at [4] per Flick J). This is a hearing de novo and the parties have adduced evidence in this hearing directed to the exercise of discretion. As it happens, the date for consideration of the evidence is not determinative of the outcome. The evidence relied upon by Pioneer KK is of confusion during the relevant period, of convergence of computer and audio-visual technologies and of brand extension by other companies operating in the computer and audio-visual fields that was evident in that period and predicted at that time to continue. The evidence with respect to post-relevant period convergence and potential for confusion has simply validated that prediction. The facts relevant to the exercise of the discretion
Case: Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478
Outcome: cited
expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. The exercise of the discretionary power to remove a mark under s 101(2) of the Act is as at the date upon which the Court makes the order for removal ( E &amp; J Gallo Winery v Lion Nathan Pty Ltd (No 2) [2008] FCA 1005 ; (2008) 78 IPR 334 at [4] per Flick J). This is a hearing de novo and the parties have adduced evidence in this hearing directed to the exercise of discretion. As it happens, the date for consideration of the evidence is not determinative of the outcome. The evidence relied upon by Pioneer KK is of confusion during the relevant period, of convergence of computer and audio-visual technologies and of brand extension by other companies operating in the computer and audio-visual fields that was evident in that period and predicted at that time to continue. The evidence with respect to post-relevant period convergence and potential for confusion has simply validated that prediction. The facts relevant to the exercise of the discretion
Case: Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14
Outcome: cited
expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed.
Case: Hermes Trade Mark [1982] RPC 425
Outcome: cited
E &amp; J Gallo at [202]-[203], Flick J stated that the following factors set out by Falconer J in Hermes Trade Mark [1982] RPC 425 were of assistance in considering the exercise of the discretion: there had been no abandonment of the trade mark; the registered proprietors of the mark still had a residual reputation in the mark; there had been sales by the registered proprietors of goods for which removal was sought since the relevant period ended; the applicants for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark; the registered proprietors were not aware of the applicant's sales under the mark. Pioneer KK says the first four factors are applicable in this case. Pioneer Computers says that the present case is not one for the proper exercise of discretion to allow the Pioneer KK marks to remain on the Register and that no sufficient reason appears or has been established for doing so in respect of the removal goods and the removal services. The relevance of s 101(4) of the Act to the exercise of the discretion in s 101(3) By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account. There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that '[c] urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register ' and that the amendment was for the purposes of clarifying the Registrar's discretion. Interestingly, the example that is given in the Bill is a registration for computer software goods where the business has specialised in the provision of a custom development of software systems service with the view that they are seen as closely related services and goods.
Case: Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 223 ALR 27
Outcome: followed
Registrar accepted that while use of the Pioneer KK marks had been demonstrated on computer peripherals, no use had been shown on the remaining removal goods and the removal services within the relevant period and Pioneer KK could not establish circumstances that were an obstacle to the full use of the registrations. On the basis that it is not necessary for exceptional circumstances to exist before the Registrar may apply the power found in s 101(3) in favour of an opponent ( Kowa Company Ltd v NV Organon [2005] FCA 1282 ; (2005) 223 ALR 27 at [98] per Lander J), the Registrar concluded that, despite non-use being established for a range of the removal goods and for the removal services, it was not viable to limit the registrations by removing the removal goods and the removal services from the Register. The basis for this was that the difference between computer goods on the one hand and audio, audio-visual and home entertainment products on the other does not enable the drawing of "fine lines" between those goods for which use was demonstrated and those the subject of non-use. The Registrar considered the evidence as to the likelihood of deception or confusion among consumers. She concluded that Pioneer KK had a significant reputation in the Pioneer KK marks and in the word "Pioneer". The Registrar took into account the time before the relevant period, when Pioneer KK produced and sold entire computer systems under the brand "Pioneer" and under the first Pioneer KK mark, although such sales were limited, as well as evidence as to its future plans for research and development of products that combine home entertainment and computing in one package. The Registrar concluded at [37] that it was not appropriate to make a distinction between the computers and associated products of Pioneer Computers and the audio, visual and electronic products of Pioneer KK. She concluded that there was a ' high likelihood of deception or confusion in the marketplace '. While recognising that Pioneer Computers had seemingly used PIONEER honestly for over 10 years, had goodwill in the computer marketplace and intended to continue to use the trade mark PIONEER in connection with goods and services unless prevented from doing so, the Registrar concluded that the public interest was best served by declining to amend the registrations. Rather, she concluded that the public interest was best served by retaining the registrations in total and preserving the established trade marks. In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show "exceptional circumstances". In E &amp; J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
Case: Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104
Outcome: considered
expression "person aggrieved" has been discussed in Kraft Foods Inc v Gaines Pet Foods Corporation (1996) 65 FCR 104 by Sackville J (with whom Sheppard and Tamberlin JJ agreed) and by Jacobson J in Health World Ltd (ABN 73 010 636 165) v Shin-Sun Australia Pty Ltd (ACN 060 792 163) [2008] FCA 100 ; (2008) 75 IPR 478 . As was said by McLelland J in Ritz Hotel Ltd v Charles of the Ritz Ltd (1988) 15 NSWLR 158 at 193 (approved by Sackville J in Kraft Foods at 112-113, by Sackville J in Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 at 363 (with whom Lehane J agreed) and by Perram J in Health World Limited v Shin-Sun Australia Pty Ltd [2009] FCAFC 14 at [23] (with whom Emmett and Besanko JJ agreed)), the expression "person aggrieved": ... embrace [s] any person having a real interest in having the Register rectified, or the trade mark removed in respect of any goods, as the case may be, in the manner claimed, and thus would include any person who would be, or in respect of whom there is a reasonable possibility of his being, appreciably disadvantaged in a legal or practical sense by the Register remaining unrectified, or by the trade mark remaining unremoved in respect of any goods, as the case may be, in the manner claimed. Without refining the breadth of the expression, Sackville J gave some examples of a person aggrieved in Kraft Foods at 113:
Case: Lever Brothers, Port Sunlight Ltd v Sunniwite Products Ltd (1949) 66 RPC 84
Outcome: referred to
114, his Honour referred to Lever Brothers, Port Sunlight Ltd v Sunniwite Products Ltd (1949) 66 RPC 84 where, in respect of a mark registered for soap, detergents and cosmetics, a manufacturer of a soapless detergent was not a person aggrieved in respect of the registration for cosmetics.
Case: McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537
Outcome: cited
Computers submits that the term "computer peripheral devices" should be removed from the registrations. It relies on the Moove case ( Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 (' Moove (No 1) ') and Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation (1990) 17 IPR 269 (' Moove (No 2) ') where a trade mark registered for dairy products was limited to cheese and flavoured milk. It submits that the removal goods and the removal services and those in the balance of the registration are clearly and separately identifiable without fine distinctions drawn as, for example, between vehicles dependent on particular use or size as in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537.
Case: Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370
Outcome: considered
Computers submits that the term "computer peripheral devices" should be removed from the registrations. It relies on the Moove case ( Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 (' Moove (No 1) ') and Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation (1990) 17 IPR 269 (' Moove (No 2) ') where a trade mark registered for dairy products was limited to cheese and flavoured milk. It submits that the removal goods and the removal services and those in the balance of the registration are clearly and separately identifiable without fine distinctions drawn as, for example, between vehicles dependent on particular use or size as in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537.
Case: Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation (1990) 17 IPR 269
Outcome: considered
Computers submits that the term "computer peripheral devices" should be removed from the registrations. It relies on the Moove case ( Murray Goulburn Co-operative Co Ltd v New South Wales Dairy Corporation [1990] FCA 32 ; (1990) 24 FCR 370 (' Moove (No 1) ') and Murray Goulburn Co-operative Company Ltd v New South Wales Dairy Corporation (1990) 17 IPR 269 (' Moove (No 2) ') where a trade mark registered for dairy products was limited to cheese and flavoured milk. It submits that the removal goods and the removal services and those in the balance of the registration are clearly and separately identifiable without fine distinctions drawn as, for example, between vehicles dependent on particular use or size as in McHattan v Australian Specialised Vehicle Systems Pty Ltd (1996) 34 IPR 537.
Case: New South Wales Dairy Corporation v Murray Goulburn Co-operative Company (1989) 14 IPR 75
Outcome: followed
in the demand, Pioneer KK sought generally to prevent Pioneer Computers from any use of the mark PIONEER and demanded a complete cessation of the use by Pioneer Computers of any mark which is substantially identical with or deceptively similar to "the Pioneer Trade Mark". The allegation of infringement of Pioneer KK's registered marks was general and not restricted to the removal goods and the removal services. A general allegation was sufficient in New South Wales Dairy Corporation v Murray Goulburn Co-operative Company (1989) 14 IPR 75 for Gummow J (at 77) and in Unilever Australia Ltd v Karounos (2001) 113 FCR 322 for Hill J (at [35]) to find that the recipient of the allegation was a person aggrieved in respect of all of the goods/classes for which the relevant trade marks were registered.