26 Feb 2009

Computer and Consumer Electronics - a converging category for trade marks

Submitted by Troy Rollo

In a decision made last week, the Federal Court has found that the convergence between computer products and consumer electronics products makes it difficult to draw fine lines between the categories. Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 134 involved a dispute between an computer manufacturer established in the mid 1990s and an audio equipment manufacturer established in the 1970s. Pioneer KK had sent cease and desist notices to Pioneer Computers, and in response Pioneer Computers sought to have the broad category of "computer peripherals" removed from Pioneer KK's trade mark registration on the basis of non-use. Pioneer KK did make CD and DVD drives, but Pioneer Computers argued that this did not amount to a use in the broader category.

Among its conclusions, the Court found that there has been such a significant degree of convergence between computer hardware products and consumer electronics products that it is impossible to draw fine lines between the categories, and consumer confusion is likely to result when similar marks are used for products in both categories by unrelated manufaturers.

This result accords with common sense - a generic computer can now form an integrated part of a home entertainment system. It might feed MP3 audio to an external amplifier, or MPEG video to a television. It might even record programs to be played later (in the same way an IQ or Tivo does). Additionally it is common to watch DVDs on computers (especially laptop computers) rather than on a television.

In this case Pioneer Computers had chosen its name and mark at a time where this convergence had only recently started. It is unlikely that in the mid 1990s a court would have reached the same result. The value of the Pioneer Computers mark (and its ability to use it) has been affected by developments since then.

Taking into account this decision, together with the Bing decision last year, businesses in computing, information technology and electronic commerce should go beyond traditional categories when checking that their trade mark is distinctive enough to identify their products without confusion. This should involve looking at possible areas of future conversion to avoid problems that might occur down the track.