NEC Corporation - [2002] ATMO 32

TRADE MARKS ACT 1995

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

Re:Application by NEC Corporation, applicant for registration of trade mark application 787798 (7, 9, 10, 11, 35, 36, 37, 38, 39, 41 and 42) - NEC - to amend its specification of goods in class 9 and request for determination of scope of claim made under a class heading.

Background

On 9 March 1999, NEC Corporation ('the applicant') filed application 787798 to register the trade mark, NEC, as depicted below.

The application was in respect of the following goods and services in classes 7, 9, 10, 11, 35, 36, 37, 38, 39, 41 and 42 as per the 7^th Edition of the International Classification of Goods and Services ('Nice').

Class	Specification
7	Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); postal automation systems; industrial robots
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
10	Surgical, medical, dental and veterinary apparatus and instruments
11	Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying and ventilating, including kitchen appliances in this class
35	Advertising services; information services for promoting the goods and services of others; consultant services and advisory services in the field of business; provision of information relating to business; business administration and business statistics; sales promotion; provision of the aforesaid information in CD-ROM format or via local and global computer information networks; rental of office machines and equipment; importing and exporting of goods of others; import and export agency services; business management and consultation services; including tracking the transportation, warehousing, inventory control, transhipment and distribution of goods; consultation and arranging services for the logistics of goods between shippers and carriers; consultation and business arrangement for custom clearance between shippers and carriers; retail and wholesale store services
36	Banking services, credit card services, financial services, account opening services, account settlement services, dealing services for stocks and bonds, financial transfer services and provision of any of the above services via local and global computer information networks; custom brokerage services; insurance; services rendered in connection with real estate affairs
37	Construction, repair, maintenance, fitting and installation of electric and electronic apparatus and instruments; repair of computer software programs and web sites; building construction
38	Communication services including telecommunication gateway services for the transmission, transfer and dissemination of electronic mail, video images, including digital information data via/on interactive television, audio, video and multimedia presentations; consultant and advisory services relating to communications networks, computer information networks, telecommunication apparatus, and communication apparatus
39	Services relating to transportation, packaging, distribution, storage and delivery of goods; inspection of goods for transportation; travel agency services
41	Services consisting of all forms of education; services having…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: NEC Corporation [2002] ATMO 32
Case: [2002] ATMO 32
Decision Date: 11 April 2002

CaseChat Overview and Summary

NEC Corporation applied to register the trade mark NEC. The application, filed in March 1999, covered a broad range of goods and services across multiple classes, including Class 9 for scientific and electrical apparatus, and various service classes. NEC sought to amend its specification of goods in Class 9, which led to a dispute with the Trade Marks Office (TMO) regarding the scope of claims made under a class heading and the specific wording of the proposed amendments. The matter was heard by a delegate of the Registrar of Trade Marks.

The primary legal issues before the delegate were the scope of a claim for a class heading in a trade mark application, and whether the applicant's requested amendment to its Class 9 specification of goods was permissible. Specifically, the delegate had to determine if a class heading should be interpreted as encompassing all goods or services within that class, and whether the term "computer software" was implicitly covered by the original Class 9 claim, or if it required specific qualification as proposed by the TMO.

The delegate considered arguments that a class heading should be treated as a shorthand for claiming all goods or services within a class, citing international practice and the practical difficulties of listing every item. However, the delegate found no support for this interpretation within the relevant Australian legislation, the *Trade Marks Act and Regulations 1995*. The delegate concluded that Regulation 3.1 simply divided goods and services into classes and did not define the scope of a class heading. Furthermore, Regulation 4.4, which governs the specification of goods and services, prohibits the use of terms like "all goods" and requires specification in terms appearing in published listings, or with sufficient information for classification. The delegate found that the applicant's argument that "computer software" was implicitly covered by the original Class 9 claim was not supported by the legislative framework.

The delegate determined that the applicant's contention that a class heading implicitly covers all goods or services within a class was not supported by the *Trade Marks Act and Regulations 1995*. Consequently, the delegate found that the applicant had not demonstrated that "computer software" per se was encompassed by the original Class 9 claim. The delegate indicated that the amendment would only be allowed if qualified, for example, to "optically recorded and/or readable computer software", as per the TMO's practice. The delegate did not make final orders in the provided text but indicated the path forward for the amendment.

Orders