Canon Kabushiki Kaisha v Jervis B Webb International Company

[2003] ATMO 82

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Canon Kabushiki Kaisha to section 92 application concerning trade mark registration 809954(9) – Webview Livescope filed by Jervis B Webb International Company.

Date of Decision:

23 December 2003

Delegate:

Ian Thompson

Representation:

Opponent

Canon Kabushiki Kaisha:  Michael Kirov, solicitor, Spruson & Ferguson
Applicant
Jervis B Webb International Company: David Fitzpatrick, patent attorney, Phillips Ormonde & Fitxpatrick (written submissions).

Decision:

1. s92 – partial removal – expression ‘person aggrieved’ refers to applicant’s status at time of making application -  trade mark used in relation to Internet cameras and computer software, removal application unsuccessful.
2. Costs ordered against applicant

Background

1. This matter concerns an application citing grounds under section 92(4)(a) made on 24 September 2001 by Jervis B Webb International Company (‘JBW’) to remove the following trade mark from the register for non-use:

   Appn No:  809954
   Owner:  Canon Kabushiki Kaisha (‘CKK’)
   Priority Date:               11 October 1999

   Goods/Services:          Class: 9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; network cameras and their control systems, including computers, cameras and application software

   Trade Mark:                WebView Livescope

   Section 92(4)(a) provides:

   (a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

   (i)to use the trade mark in Australia; or

   (ii)to authorise the use of the trade mark in Australia; or

   (iii)to assign the trade mark to a body corporate for use by the body corporate in Australia;

   in relation to the goods and/or services to which the non-use application relates and that the registered owner:

   (iv)has not used the trade mark in Australia; or

   (v)has not used the trade mark in good faith in Australia;

   in relation to those goods and/or services at any time before the period of one month ending on the day on which the non‑use application is filed;

2. On 29 November 2001, CKK filed notice of opposition to removal of the trade mark.  The notice states that:

   ·    JBW is not a person aggrieved

   ·    that the application for registration was made with the intention in good faith to use the trade mark in relation to the goods for which it is registered and that the trade mark has in fact been so used by the registered owner or by an authorised user of the trade mark.

   ·    that the trade mark was used in respect of some or all of the goods for which it is registered by the owner or an authorised user.

   ·    further, and in the alternative, the Registrar of Trade Marks should refuse to remove the trade mark from the register in the exercise of his discretion.

3. In support of its opposition, CKK served and filed a statutory declaration by Nobuyoshi Tanaka.  JBW served and filed evidence in answer - a statutory declaration by Malcolm Bell, patent attorney for JBW.

4. As a delegate of the Registrar I heard CKK's arguments in relation to the matter, at a hearing in Sydney on 28 October 2003, presented by Michael Kirov, solicitor, of Spruson & Ferguson.  JWB relied on written submissions by its attorney, David Fitzpatrick of Phillips Ormonde & Fitzpatrick.

   The Evidence

5. The evidence shows that CKK, the opponent, has used the trade mark WebView Livescope in Australia in relation to a system which comprises a video camera (which captures images for webcast), camera server software and viewer software.  The trade mark was first used in Australia in April 1998 and CKK has provided sales figures for the years 1998 through to 2002, when the declaration was made.  A brochure showing the goods is appended to the declaration.

6. Malcolm Bell declares for applicant JBW that he is instructed by the US law firm Dickinson Wright PLC and that he believes from their instructions that JBW actively markets computer software in the United States and Canada under the trade mark WEB VIEW.  This software is for receiving, tracking and routing passenger baggage in airports.

7. JBW owns or controls an active subsidiary in Australia called Webb Conveyor Company of Australia Pty Ltd, (‘WCC’) and WCC, states Mr Bell, is ready willing and able to market the product.

8. JBW has an application to register the trade mark WEB VIEW which is effectively barred by CKK’s registered trade mark for which is seeks removal.

9. For the purposes of discussion, I will overlook the third-hand nature of JBW’s evidence.  If the matter was finely balanced, the reduced weight that must be given to evidence of this nature would have swung it against JBW.

   Reasons

10. A Person Aggrieved

    The comments of Drummond J in Woolly Bull Enterprises Pty Ltd v Reynolds (2001) 107 FCR 166, at paragraph 7 are relevant to this matter:

    An object of the 1995 Act is to create, by registration of trade marks, a species of tradeable property - see ss 21 and 22 - but only where such marks are connected with actual or contemplated trade in goods and services. It would be contrary to this object of the 1995 Act to accord standing to a person to attack a registered mark on the ground that that person had made his own application for registration of a conflicting mark where there was no proof that the person either had a trade in goods marked with the mark the subject of his registration application or had a bona fide intention to trade in such goods. Such a person cannot be said to be "appreciably disadvantaged in a legal or practical sense" by a mark he wishes to attack remaining on the Register, though he might wish to traffick in marks as distinct from to trade in marked goods.

11. Mr Bell states that, as at 28 March 2003 when his declaration was made, JBW actively markets goods under the trade mark WEBB VIEW in the USA and in Canada.  There is no information as to whether JBW used the trade mark at the time when the non-use application was filed on 24 September 2001.  JBW has an Australian subsidiary which, it is said, is ready willing and able and wants to market goods bearing the trade mark however; however, whether this was so at the time that the non-use application was made is not stated.  

12. But, in terms of section 92, what I must look at is JBW’s status at the time that the non-use application was made.  Subsection 92(1) provides:

    (1)A person aggrieved by the fact that a trade mark is or may be registered may, subject to subsection (3), apply to the Registrar for the trade mark to be removed from the Register.

13. Thus, it is apparent that a person’s status as a person aggrieved must have currency at the time that the application to the Registrar is made since it is only a person aggrieved who can make such an application. 

14. It is not apparent from Mr Bell’s declaration that JBW was a person aggrieved at the time the application was made – Mr Bell refers to the applicant’s status and business activities at some distance in time after the non-use application was filed.  CKK’s arguments that JBW is not a person aggrieved must therefore succeed.

    Intention to use the trade mark

15. There is no evidence before me which affirmatively shows that CKK did not, at the date of filing its application to register the trade mark, have an intention to use the trade mark in respect of any or all of the goods in respect of which it is registered: Structureco Inc v Starite Distributors Pty Ltd [2000] ATMO 31 and Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 at para 59.

    Conclusion

16. The application fails as applicant JBW has not shown it was a person aggrieved by the registration at the time the application was made. 

    Costs

17. CKK is entitled to its costs at the official scale.

    Ian Thompson
    Hearing Officer
    Trade Marks Hearings
    23 December 2003