Canon Kabushiki Kaisha v Brook, Robert James & Anor t/as The Cannon Watch Co [1996] FCA 756

Canon Kabushiki Kaisha v Brook, Robert James & Anor t/as The Cannon Watch Co [1996] FCA 756

Respondents established proprietorship of the mark 'CANNON' for watches through continuous and bona fide use since about 1970, including use by predecessors. Although the marks 'Canon' and 'CANNON' are substantially identical and deceptively similar in substance, watches and calculators or clocks are not goods of...

Source-derived case information.

Jurisdiction
Australia
Judgment Date
28 August 1996
Procedural Posture
Appeal Under S 49(1) of the Trade Marks Act 1955 (cth) / Judgment After Rehearing of Appeal From Decision of Delegate of Registrar of Trade Marks
Outcome
Application dismissed with costs.
Legal Topics
['trade Marks' 'proprietorship' 'likelihood of Confusion' 'prior Continuous Use' 'opposition Proceedings' 'blameworthy Conduct']
['intellectual Property'] ['trade Marks' 'proprietorship' 'likelihood of Confusion' 'prior Continuous Use' 'opposition Proceedings' 'blameworthy Conduct']

Source-derived case record

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Procedural Posture

Appeal Under S 49(1) of the Trade Marks Act 1955 (cth) / Judgment After Rehearing of Appeal From Decision of Delegate of Registrar of Trade Marks

Legal Issues

  1. 1 ['Whether respondents have established proprietorship of the mark for which they have applied under s 40 Trade Marks Act 1955 (Cth)' 'Whether applicant has a superior claim to proprietorship' 'Whether the marks are substantially identical or deceptively similar under s 33(1)' "Whether 'watches' and 'clocks with calculators' are goods of the same description under s 33(1)" 'Whether use of mark by applicant and respondents is likely to deceive or cause confusion under s 28(a)' "Whether applicant need establish 'blameworthy conduct' under s 28(d) in opposition proceedings" 'Whether respondents can establish prior continuous use within meaning of s 34(2)']

Ratio Decidendi

Respondents established proprietorship of the mark 'CANNON' for watches through continuous and bona fide use since about 1970, including use by predecessors. Although the marks 'Canon' and 'CANNON' are substantially identical and deceptively similar in substance, watches and calculators or clocks are not goods of the same description for the purposes of s 33(1). Respondents' continuous use prior to applicant's use and registration satisfies s 34(2). For opposition under s 28(a), in the absence of blameworthy conduct and given distinctions in goods and market, the applicant did not establish likelihood of deception/confusion sufficient to oppose registration. Application dismissed.

Court Disposition

Application dismissed with costs.

Orders

  • ['The application is dismissed.' 'The applicant pay the costs of the respondents.']