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Hills Industries Ltd v Bitek Pty Ltd

Hills Industries Ltd v Bitek Pty Ltd

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FEDERAL COURT OF AUSTRALIA
Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

Citation: Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94

Parties:
HILLS INDUSTRIES LIMITED (ACN 007 573 417) v BITEK PTY LTD (ACN 084 308 207)

HILLS INDUSTRIES LIMITED (ACN 007 573 417) v BITEK PTY LTD (ACN 084 308 207)

BITEK PTY LTD (ACN 084 308 207) v HILLS INDUSTRIES LIMITED (ACN 007 573 417)

File numbers: SAD 14 of 2008
SAD 39 of 2009
SAD 40 of 2009

Judge: LANDER J

Date of judgment: 15 February 2011

Corrigendum: 4 May 2011

Catchwords:
INTELLECTUAL PROPERTY – Trade marks – registration – application for registration of mark “DIGITEK” – opposition to registration under s 44(1) – whether mark deceptively similar to opponent’s registered trade mark “DGTEC” – whether the applicant’s TV installation accessories and goods the subject of opponent’s trade mark (digital and electronic products including televisions, video players, DVD players, CD players, decoders and cameras) are “goods of the same description” within meaning of s 14(1) of Trade Marks Act 1995 (Cth).

INTELLECTUAL PROPERTY – Trade marks – appeal from Registrar of Trade Marks – standard of proof to be applied in determining grounds of opposition – whether opponent required to satisfy the Court that trade marks should clearly not be registered.

INTELLECTUAL PROPERTY – Trade marks – registration – whether honest concurrent use of trade marks established for purposes of s 44(3)(a) – whether evidence of use after the date the application for registration is made may be taken into account under s 44(3) – whether, because of “other circumstances” it is proper to allow registration of the mark under s 44(3)(b).

INTELLECTUAL PROPERTY – Trade marks – opposition – whether opponent’s marks had acquired a reputation in Australia for purposes of s 60 – nature of evidence required to show reputation considered – whether s 60 subject to s 44(3) – whether applicant’s registration would be contrary to law under s 42(b) because its use would constitute misleading and deceptive conduct under s 52 Trade Practices Act 1974 (Cth).

INTELLECTUAL PROPERTY – Trade marks – application for removal of trade mark from Register for non-use – application seeking to remove all goods in respect of which the mark is registered – evidence of use of some, but not all of the goods – whether grounds for removal under s 92(4) established – whether s 101(2) affords discretion to remove certain goods from registration notwithstanding that the application seeks removal of all of the goods – whether permissible for the Court to amend a registration to ensure that it accords with the scope of established use – exercise of discretion under s 101(3) – scope of s 101(4) – whether the opponent has established use of “similar goods” under s 101(4) - whether order for removal from the Register operates retrospectively to provide a defence to infringement.

INTELLECTUAL PROPERTY – Trade marks – infringement – whether infringement under ss 120(1), (2) and (3)…

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

Case: [2011] FCA 94
Decision Date: 15 February 2011

CaseChat Overview and Summary

The case of Hills Industries Ltd v Bitek Pty Ltd involves an opposition to the registration of the trade mark “DIGITEK” by Bitek Pty Ltd, which was opposed by Hills Industries Ltd, the owner of the registered trade mark “DGTEC.” The core dispute revolves around whether the goods associated with the proposed “DIGITEK” trade mark are deceptively similar to those covered by Hills’ “DGTEC” trade mark, specifically focusing on whether they fall under the same description or are similar goods. The Federal Court of Australia was tasked with determining several legal issues, including the standard of proof required in opposition proceedings, the interpretation of "goods of the same description" under the Trade Marks Act 1995 (Cth), and whether the applicant’s goods could be considered similar or of the same description as the opponent’s goods.

The court carefully examined the nature of the goods involved, distinguishing between television installation accessories and digital and electronic products. It concluded that although these goods are interdependent in their functionality, they are not similar or of the same description. The court held that television installation accessories such as antennas and cabling are not akin to televisions, video players, DVD players, or cameras. This distinction was crucial in finding that the proposed registration of “DIGITEK” should not be opposed based on deceptive similarity. The court further considered the standard of proof in opposition cases and concluded that the opponent must show a clear likelihood of deception, which was not sufficiently demonstrated in this instance. Additionally, the court assessed whether the marks had acquired a reputation or if the applicant’s registration would constitute misleading and deceptive conduct under the Trade Practices Act 1974 (Cth), ultimately finding these grounds for opposition were not met.

In conclusion, the Federal Court dismissed Hills Industries Ltd’s appeal against the registration of “DIGITEK” by Bitek Pty Ltd. The court found that the goods associated with the two trade marks were not similar or of the same description, thereby invalidating the primary ground of opposition. Consequently, the registration of “DIGITEK” was upheld, and no grounds for removal of the “DGTEC” mark from the Register were established. The decision underscores the importance of distinguishing between goods in similar industries to prevent unwarranted opposition to trade mark registrations.

Orders

Orders of the court

1. The parties bring in short minutes of order to reflect these reasons.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

When analysed the goods are quite different even though in the case of antennas they assist a television to operate. The Bitek goods are restricted to TV installation accessories including external TV antennas. They are not similar goods to televisions and certainly not similar goods to any of the other goods in the Hills’ goods. Nor are they goods of the same description. A television installation accessory is not an article of the same description as a television because it is quite different.CONCLUSION The question is whether the “TV installation accessories including external TV antennas, none of which are set-top boxes” and “Digital and Electronic products including televisions, video players, DVD players, decoders and cameras”, are similar goods or of the same description as each other. The goods sold under the Bitek trade mark are not similar or of the same description as the goods sold under the Hills’ mark even though the goods, especially televisions and television antennas, and television installation accessories, are interdependent upon each other for their functionality. The delegate also thought they were not. She said:Registration 901020 is for a broad range of goods namely ‘digital and electronic products’. Although it describes ‘televisions, video players, DVD players, CD players, decoders and cameras’ as being included in the category of ‘digital and electronic products’ its registration is not limited to those specific goods. The question is whether the ‘digital and electronic products’ of registration 901020 are the same or similar to any of the goods of the applicant’s trade mark now that set top boxes have been excluded. I am not satisfied that they are.External TV antennas are not a ‘digital or electronic product’, nor are they similar to such goods. The evidence shows the applicant is using its trade mark in relation to TV installation accessories such as cabling, connectors, adaptors and the like. These too are not ‘digital or electronic products, nor are they similar to such goods. I find none of the applicant’s goods are the same or similar to those of registration 901020. The ground of opposition under section 44 fails on this basis.I agree with the delegate. In my opinion, the delegate was right to conclude that the Bitek mark should be registered. I would have reached the same conclusion whether the test to be applied is that in Lomas v Winton Shire Council [2003] AIPC 91-839 or in Clinique Laboratories Inc v Luxury Skincare Brands Pty Ltd 61 IPR 130. In other words, if the obligation upon Hills was to establish its opposition no higher than on the balance of probabilities it has failed to discharge that obligation. For those reasons, in my opinion, Hills’ appeal should be dismissed. Because of the conclusion which I have reached in relation to s 44(1), it is not strictly necessary to consider Bitek’s reliance on s 44(3) of the Act which was relied upon by Bitek if Hills succeeded under s 44(1). However, in case I am wrong about my conclusion that the goods are not similar goods or goods of the same description and that therefore s 44(1) is a bar to registration, I should address Bitek’s fall back position under s 44(3).

Ratio Decidendi

Legal Principle Established

In relation to the non-use application, Gummow J noted at 43:It is clear that during the relevant period (24 February 1988—6 June 1988) there was use by the first respondent of the MOO trade mark in relation to packaged cheese. But it was hotly disputed whether there had been use in the technical sense required for s 23(1)(b) upon flavoured milk, the principal subject of contention between the applicant and first respondent. User in relation to cheese does not necessarily preserve the registration in its entirety. The trade mark may be removed in respect of those goods for which it was registered other than cheese: Hunter Douglas (Australia) Pty Ltd v Perma Blinds (1970) 122 CLR 49; Unilever plc v Johnson Wax Ltd [1989] FSR 145 at 160.(Emphasis added.) Murray Goulburn appealed Gummow J’s findings under s 22 and sought that the registration be allowed to remain as “dairy products”. The Full Court of the Federal Court allowed an appeal in respect of s 22 but ordered rectification of the Register by limiting the goods in respect of which the trade mark MOO was registered to cheese and flavoured milk. In Unilever plc v Johnson Wax Ltd [1989] FSR 145, the “LIFEBUOY” mark was registered in respect of “all goods included in class 3”. The only evidence of use of the mark was in respect of “soap”. Justice Whitford amended the specification of goods for the LIFEBUOY registration, limiting it to “soaps and other washing liquids, powders and preparations”. In Hunter Douglas (Australia) Pty Ltd v Perma Blinds (1970) 122 CLR 49, Kitto J had made orders expunging certain goods from the opponent’s registration on the grounds of non-use. On appeal Barwick CJ noted that the effect of his Honour’s orders was to:… in substance to limit the registration of the mark to the residue of the goods in respect of which it is registered, ie after elimination of “venetian blinds” and “awnings and blinds”. This course is in conformity with the provisions of the Act. The power to excise goods from a statement of goods is consistent with the underlying policy of Part 9 of the Act which is to facilitate the removal of an unused trade mark. Removal of trade marks in respect of goods for which there is no evidence of use is warranted to ensure the integrity and accuracy of the Register: New South Wales Dairy Corporation v Murray Goulburn Co-op Corporation 14 IPR 75. It is also consistent with s 101(2) which gives the Court a discretion “to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates”. Section 101(2) assumes that the Registrar or Court may be left in circumstances where some of the grounds have been established in relation to some of the goods and/or services but not all and the subsection empowers the Registrar or Court in the exercise of its discretion to remove the trade mark from the Register in respect of any or all of the goods to which the application relates.

Citation:		Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94
Parties:		HILLS INDUSTRIES LIMITED (ACN 007 573 417) v BITEK PTY LTD (ACN 084 308 207) HILLS INDUSTRIES LIMITED (ACN 007 573 417) v BITEK PTY LTD (ACN 084 308 207) BITEK PTY LTD (ACN 084 308 207) v HILLS INDUSTRIES LIMITED (ACN 007 573 417)
File numbers:		SAD 14 of 2008 SAD 39 of 2009 SAD 40 of 2009
Judge:		LANDER J
Date of judgment:		15 February 2011
Corrigendum:		4 May 2011
Catchwords:		INTELLECTUAL PROPERTY – Trade marks – registration – application for registration of mark “DIGITEK” – opposition to registration under s 44(1) – whether mark deceptively similar to opponent’s registered trade mark “DGTEC” – whether the applicant’s TV installation accessories and goods the subject of opponent’s trade mark (digital and electronic products including televisions, video players, DVD players, CD players, decoders and cameras) are “goods of the same description” within meaning of s 14(1) of Trade Marks Act 1995 (Cth). INTELLECTUAL PROPERTY – Trade marks – appeal from Registrar of Trade Marks – standard of proof to be applied in determining grounds of opposition – whether opponent required to satisfy the Court that trade marks should clearly not be registered. INTELLECTUAL PROPERTY – Trade marks – registration – whether honest concurrent use of trade marks established for purposes of s 44(3)(a) – whether evidence of use after the date the application for registration is made may be taken into account under s 44(3) – whether, because of “other circumstances” it is proper to allow registration of the mark under s 44(3)(b). INTELLECTUAL PROPERTY – Trade marks – opposition – whether opponent’s marks had acquired a reputation in Australia for purposes of s 60 – nature of evidence required to show reputation considered – whether s 60 subject to s 44(3) – whether applicant’s registration would be contrary to law under s 42(b) because its use would constitute misleading and deceptive conduct under s 52 Trade Practices Act 1974 (Cth). INTELLECTUAL PROPERTY – Trade marks – application for removal of trade mark from Register for non-use – application seeking to remove all goods in respect of which the mark is registered – evidence of use of some, but not all of the goods – whether grounds for removal under s 92(4) established – whether s 101(2) affords discretion to remove certain goods from registration notwithstanding that the application seeks removal of all of the goods – whether permissible for the Court to amend a registration to ensure that it accords with the scope of established use – exercise of discretion under s 101(3) – scope of s 101(4) – whether the opponent has established use of “similar goods” under s 101(4) - whether order for removal from the Register operates retrospectively to provide a defence to infringement. INTELLECTUAL PROPERTY – Trade marks – infringement – whether infringement under ss 120(1), (2) and (3)…