Technology Convergence Considered In Pioneer Case

In Pioneer Computers Australia Pty Limited v Pioneer KK

([2009] FCA 135, February 23 2009), the Federal Court of Australia

has considered the issue of technology convergence in deciding

whether to exercise its discretion in cancellation proceedings.

Pioneer KK is an internationally famous company that is best

known for its audio and visual electronic products for car, office

and home use. Its related company, Pioneer Australia, distributes

Pioneer KK's products in Australia.

Pioneer Computers Australia Pty Limited was incorporated in

December 1996 as a distributor of third-party computers and

computer parts. In 1998 it began assembling and selling its own

computers and servers under the mark PIONEER, as well as providing

repair and support services for its own computers. It subsequently

obtained PIONEER-branded DVD writers from Pioneer Australia and

used those branded DVD writers as part of its built-to-order

personal computers. As of October 2007, sales of personal

computers, notebooks and servers sold under the PIONEER mark

amounted to 90% of Pioneer Computers' sales.

On January 24 2004 Pioneer Computers applied for partial

cancellation for non-use of two PIONEER (stylized) trademarks owned

by Pioneer KK. Cancellation was sought in respect of the following

goods and services:

"computers; computer

peripheral devices; computer keyboards; computer memories; printers

for use with computers; data processing apparatus; CD-ROM disc

drives; computer software; computer operating programs; computer

game programs; installation, maintenance and repair of office

machines and equipment; data processing apparatus and

computers."

In proceedings before the registrar, Pioneer KK demonstrated

relevant use of its trademarks on DVD writers, CD read/write

players, JPEG players, DVD-ROMs, CD writers, 'write once, read

many' discs and video cards. The registrar considered that

these goods fell within the description of "computer

peripherals". The registrar also found that despite the fact

that Pioneer KK had not demonstrated use on the full range of the

goods and services for which cancellation was sought, it was not

viable to limit the registrations by removing any goods or services

from the register due to the "fine lines" between the

goods for which use was demonstrated and those for which

cancellation was sought. In concluding that there was a likelihood

of confusion in the marketplace and that the public interest was

best served by declining to amend the...