A recent decision of the Federal Court illustrates how the convergence of technologies is affecting trade mark law, recognising that, under certain circumstances, the scope of registered trade mark protection may be expanded to include the use of a trade mark in relation to new technologies which were not being used or necessarily contemplated by the applicant at the time the original trade mark application was filed.
Background
The respondent, Pioneer KK, owns the registered trade marks PIONEER and Pioneer, which, amongst other things, claims monopoly for "computers and computer peripherals". It has been selling audio and audio-visual products since 1973, including audio systems, televisions and car electronic products under those registered trade marks. The applicant, Pioneer Computers Australia Pty Ltd sought to remove "computers and computer peripherals" from Pioneer KK's trade marks, alleging that Pioneer KK did not use its trade marks in connection with those goods (non-use of a trade mark is a ground to cancel a registered trade mark).
Pioneer Computers had been using the mark "Pioneer" in Australia for the previous 10 years in relation to desktop computers, notebook computers, service and other computer related goods and also in relation to installation, repair and support services for computers.
The decision
The main issue in this case was whether some electronic goods sold by Pioneer KK, such as DVDROM drives, DVD writers and computer data storage jukeboxes, could also be considered "computers and computer peripheral devices".
The Federal Court accepted Pioneer Computers' proposition that there was no use of the Pioneer KK trade marks in relation to computers per se, but only in connection with audio-visual equipment. Under these circumstances alone, "computers and computer peripheral devices" should have been removed from these trade marks.
However, the Federal Court considered that as a consequence of the convergence of technologies within the relevant industries, entertainment (which includes audio-visual equipment) can no longer be distinguished from computer technologies, especially in relation to multimedia devices.
The Federal Court agreed with the comments made by the Trade Marks Assistant Registrar 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 Court accepted that the convergence of digital technologies and "brand extension" in relation to a particular market should be considered in respect of the use of a trade mark.
"Brand extension" enables an existing brand with an established reputation in relation to certain product categories, to be adapted to expand trade mark protection to new product categories which are directly linked to the products under which the original reputation was built.
In this particular case, it was held that the distinction between computer products and audio-visual products had disappeared or diminished to the extent that the relevant consumers were not able to distinguish between them anymore.
The history of the development of technologies provided grounds for the conclusion that there is now a recognised connection between television, the Internet and video games, in which the television could be used for use of the Internet and for accessing data services.
The Federal Court accepted that although 20 years ago computers were used predominantly as business devices and audio-visual equipment was used predominantly in connection with entertainment, this has changed with developments in technology, enabling computers to be used as entertainment tools and home media to be used for storage of data, which may include sounds and images.
The development of broadband Internet changed the way in which computers were regarded, from being originally business tools to being devices possessing modern multimedia functions, including entertainment functions such as audio and visual operations.
The creation of the Ipod was cited as the most recent example of such convergence, as it can perform both computer and entertainment functions. This development in technology merged audio-visual and pure computer technologies into the same category of consumer goods, which are now retailed through the same channels of trade.
In this context, the Court accepted that Pioneer KK's trade in Australia has expanded with the development in technology, to a stage where consumer electronic digital products could be used in conjunction with computers enabling digital information to be created, stored, manipulated and transferred from one digital product to another and then to a computer.
To keep its trade mark protection to "computers and computer peripherals", Pioneer KK had to provide evidence that it had applied its trade marks on computers. The convergence of technologies provided the necessary support to the submission that, use of a trade mark in relation to audio-visual equipment was also acceptable as use in relation to "computers and computer peripherals".
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