Robert James Brook v Cannon Kabushiki Kaisha

This case concerned an opposition by Cannon Kabushiki Kaisha to the trade mark application number B466669 for the word CANNON, filed by Robert James Brook and Rachel Brook trading as The Cannon Watch Company. The applicants sought to register the mark for watches, having used it extensively since 1978. The opposition was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the CANNON trade mark application should be refused on several grounds, including that it was substantially identical or deceptively similar to the opponent's registered trade mark CANON for clocks with calculators, and whether the applicants' use of CANNON was entitled to protection under the provisions for honest concurrent use or other special circumstances. The delegate also considered whether the opponent had established grounds for opposition based on lack of distinctiveness, prejudice to its business, misleading or confusing use, or that the mark was disentitled to protection in a court of justice.

The delegate reasoned that the marks CANNON and CANON were substantially identical and the goods, watches and clocks, were the same or of the same description, thus raising a serious objection under section 33 of the Trade Marks Act. However, the delegate found that the applicants' use of the CANNON mark was entitled to acceptance under section 34(1) of the Act. This conclusion was based on an assessment of the quantum of concurrent use, the degree of likely confusion, the honesty of the concurrent use, instances of confusion, and the relative inconvenience of registration. The delegate found the applicants' use to be impressive, with substantial goodwill developed over nine years of extensive use and advertising, and that the instances of confusion were surprisingly few and did not outweigh the applicants' established reputation. The delegate also found no evidence to support the opponent's claims of prejudice or that the mark was disentitled to protection.

Accordingly, the delegate dismissed the opposition and ordered that trade mark application number B466669 should proceed to registration, awarding costs to the applicants.