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Hills Industries Limited v Bitek Pty Ltd (Includes Corrigendum dated 4 May 2011) [2011] FCA 94 (15 February 2011)
Last Updated: 5 May 2011
FEDERAL COURT OF AUSTRALIA
Hills Industries Limited v Bitek Pty Ltd
[2011] FCA 94
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Citation:
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Parties:
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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)
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File numbers:
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SAD 14 of 2008
SAD 39 of 2009
SAD 40 of 2009
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Judge:
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LANDER J
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Date of judgment:
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15 February 2011
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Corrigendum:
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4 May 2011
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Catchwords:
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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) – whether
applicant’s trade mark was “well known” under s 120(3) –
s 122(1)(fa) - whether the respondent would obtain registration of its mark
if it applied for it.
TRADE PRACTICES – misleading and deceptive conduct – s
52 Trade Practices Act 1974 (Cth) – whether applicant’s sale
of set-top boxes constitutes misleading and deceptive conduct.
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Legislation:
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Trade Marks Act 1995 (Cth) ss 44, 42, 43,
58, 60, 35, 53, 55, 14, 120, 96 101, 92, 66, 66A, 100, 20, 72, 122Trade
Practices Act 1974 (Cth) ss 52, 53Trade Marks Act 1955 (Cth) ss
22, 35 Trade Marks Amendment Act 2006 (Cth) Trade Mark
Regulations 1995 (Cth), reg 9.1, 9.3
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Cases cited:
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22, 23 and 24 March 2010
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Date of last submissions:
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24 March 2010
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Place:
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Sydney (heard in Adelaide)
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Division:
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GENERAL DIVISION
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Category:
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Catchwords
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Number of paragraphs:
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Counsel for Hills Industries Limited: |
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Solicitor for Hills Industries Limited:
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Piper Alderman
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Counsel for Bitek Pty Ltd:
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Mr B Caine SC with Ms H Rofe
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Solicitor for Bitek Pty Ltd:
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Norman Waterhouse
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FEDERAL COURT OF AUSTRALIA
Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94
CORRIGENDUM
- In
paragraph 227, delete the word “allowed” and insert the word
“dismissed” so that the paragraph reads:
“The appeal should
be dismissed and the trade mark application 960495 should be
registered.”
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I certify that the preceding paragraph is a true copy of the Reasons for
Judgment herein of the Honourable Justice Lander.
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Associate:
Dated: 4 May 2011
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IN THE FEDERAL COURT OF AUSTRALIA
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SOUTH AUSTRALIA DISTRICT REGISTRY
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HILLS INDUSTRIES LIMITED (ACN 007 573
417)Applicant
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AND:
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BITEK PTY LTD (ACN 084 308
207)Respondent
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DATE OF ORDER:
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15 FEBRUARY 2011
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WHERE MADE:
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SYDNEY (HEARD IN ADELAIDE)
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THE COURT ORDERS THAT:
- The
parties bring in short minutes of order to reflect these reasons.
Note: Settlement and entry of orders is dealt with in Order 36 of
the Federal Court Rules.
The text of entered orders can be located using
Federal Law Search on the Court’s website.
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IN THE FEDERAL COURT OF AUSTRALIA
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SOUTH AUSTRALIA DISTRICT REGISTRY
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GENERAL DIVISION
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SAD 39 of 2009
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BETWEEN:
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HILLS INDUSTRIES LIMITED (ACN 007 573 417)
Applicant
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AND:
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BITEK PTY LTD (ACN 084 308 207)
Respondent
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JUDGE:
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LANDER J
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DATE OF ORDER:
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15 FEBRUARY 2011
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WHERE MADE:
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SYDNEY (HEARD IN ADELAIDE)
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THE COURT ORDERS THAT:
- The
parties bring in short minutes of order to reflect these reasons.
Note: Settlement and entry of orders is dealt with in Order 36 of
the Federal Court Rules.
The text of entered orders can be located using
Federal Law Search on the Court’s website.
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IN THE FEDERAL COURT OF AUSTRALIA
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SOUTH AUSTRALIA DISTRICT REGISTRY
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GENERAL DIVISION
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SAD 40 of 2009
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BETWEEN:
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BITEK PTY LTD (ACN 084 308 207)
Applicant
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AND:
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HILLS INDUSTRIES LIMITED (ACN 007 573
417)
Respondent
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JUDGE:
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LANDER J
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DATE OF ORDER:
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15 FEBRUARY 2011
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WHERE MADE:
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SYDNEY (HEARD IN ADELAIDE)
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THE COURT ORDERS THAT:
- The
parties bring in short minutes of order to reflect these reasons.
Note: Settlement and entry of orders is dealt with in Order 36 of
the Federal Court Rules.
The text of entered orders can be located using
Federal Law Search on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
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SOUTH AUSTRALIA DISTRICT REGISTRY
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GENERAL DIVISION
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SAD 14 of 2008
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BETWEEN:
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HILLS INDUSTRIES LIMITED (ACN 007 573 417)
Applicant
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AND:
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BITEK PTY LTD (ACN 084 308 207)
Respondent
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BETWEEN:
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HILLS INDUSTRIES LIMITED (ACN 007 573 417)
Applicant
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AND:
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BITEK PTY LTD (ACN 084 308 207)
Respondent
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BETWEEN:
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BITEK PTY LTD (ACN 084 308 207)
Applicant
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AND:
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HILLS INDUSTRIES LIMITED (ACN 007 573
417)
Respondent
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JUDGE:
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LANDER J
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DATE:
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15 FEBRUARY 2011
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PLACE:
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SYDNEY (HEARD IN ADELAIDE)
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REASONS FOR JUDGMENT
INTRODUCTION
- Three
related matters were heard concurrently and this judgment addresses those
separate proceedings, all of which were brought under
the Trade Marks Act
1995 (Cth) (the Act). The applicant in SAD 14 of 2008 and SAD 39 of 2009,
the respondent in SAD 40 of 2009, Hills Industries Limited (Hills)
also seeks
relief under ss 52 and 53 of the Trade Practices Act 1974 (Cth) (the
TPA).
- In
the first proceeding (SAD 14 of 2008 – appeal proceeding) Hills
appealed from a decision of a delegate of the Registrar
of Trade Marks (the
delegate) allowing registration of Bitek Pty Ltd’s (Bitek), DIGITEK
mark.
- In
the second proceeding (SAD 40 of 2009) Bitek claims that Hills’ marks
should be deregistered for non-use. That application
has been referred to this
Court by the Registrar of Trade Marks.
- In
the third proceeding (SAD 39 of 2009 – infringement proceeding) Hills
alleges that Bitek has infringed its series of marks,
DGTEC, DGTEK and DGTECH,
and has as well contravened ss 52, 53(c) and 53(d) of the TPA.
- On
21 April 2009 an order was made with the consent of both parties that the
proceedings be heard concurrently and the evidence in
each proceeding be
evidence in the other proceedings. It was also ordered that liability be
determined separately from quantum.
These reasons address the question of
liability.
- The
proceedings proceeded upon affidavits. Both parties tendered a number of
affidavits in support of their case which do not need
to be identified. I will
refer to the particular evidence relied upon by the parties in the reasons which
follow.
- Counsel
for Hills did not seek to cross-examine any of the deponents to the affidavits
relied upon by Bitek. Bitek’s counsel
cross-examined two of the deponents
of affidavits relied upon by Hills, being Mr Anthony (Tony) Cormick and Mr Barry
Griggs. Mr
Cormick was a former director of DGTEC Pty Ltd (the company). Mr
Griggs is the research and development manager of the antennas
and electronics
division at Hills.
- The
trade marks in suit are:
(a) Bitek’s pending trade mark
application no. 960495 for “DIGITEK” in respect of goods in Class
9:
TV installation accessories including external TV antennas, none of the
foregoing being set-top boxes.
That trade mark application was filed on 4 July 2003.
(b) Hills’ DGTEC trade mark Registration No. 901020 for the series of
words “DGTEC, DGTEK and DGTECH” in respect
of goods in Class 9:
Digital and electronic products including televisions, video players, DVD
players, CD players, decoders and cameras.
That trade mark application was filed on 23 January 2002.
HISTORY
- The
company was incorporated on 31 July 2001 with two directors, Paul Cormick (until
7 October 2007) and Anthony (Tony) Cormick.
On 21 November 2007 Tony
Cormick placed the company into voluntary administration. On 18 December
2007 liquidators were appointed.
- In
November 2007 Hills acquired the business assets of the company pursuant to a
Sales of Business Assets Agreement. The company
sold and Hills purchased all
right, title and interest in the “Assets” of the company which
included the “Goodwill”
of the company which was defined to include
the business name “DGTEC” and all intellectual property relating to
the business
name and the “Business” of the company including
registered and unregistered trade marks: see ss 106 and 106(3) of the
Act.
At the time of entry into the agreement the company owned the DGTEK Australian
Trade Mark Registration no. 901020 for the series
of marks DGTEC; DGTEK and
DGTECH, which are the subject marks relevant to all three proceedings.
- At
common law a trade mark was assignable only if it went with the goodwill of the
business in which the trade mark was used: Pinto v Badman (1891) 8 RPC
181 at 194. However, legislative reform has led to the enactment of s 106
of the Act which provides that a registered trade mark or
a trade mark whose
registration is being sought may be assigned or transmitted with or without the
goodwill of the business concerned
in the relevant goods and/or services.
- The
company was amongst the first suppliers of set-top boxes in the Australian
market and its first sales of set-top boxes under
the DGTEC trade mark occurred
in about August 2001.
- A
set-top box converts a digital signal into a form which can be displayed on an
existing analogue television to which it is connected.
Between 2001 and
November 2005 the company sold three separate set-top models; DH-2000A; DH2000B;
and DG-5000i. The company sold
its set-top boxes under the DGTEC mark through
predominantly national retail channels such as Dick Smith, the Good Guys, Harvey
Norman,
Retravision and Myer.
- After
November 2005 the company and Hills, after it acquired the company’s
assets, also sold the following products under the
DGTEC trade mark,
being:
(a) digital video recorders;
(b) LCD televisions;
(c) CD and MP3 players;
(d) DVD player/recorders;
(e) micro-stereo sound systems;
(f) iPod docking speakers; and
(g) web-based cameras.
- Bitek
was promoted and incorporated by Kazik Bialecki in 1998.
- Bitek
has since its incorporation carried on the business of importing and selling
products used in the installation of free-to-air
and satellite television
receivers. It carries on business in New South Wales, Victoria, the Australian
Capital Territory and South
Australia. It has supplied products under a variety
of trade marks including the DIGITEK mark which it adopted in early 2003 to
enable it to sell products to other trade suppliers with whom it was otherwise
in competition. Mr Bialecki’s evidence was
that DIGITEK was chosen as the
mark on the basis that its prefix came from the word “digital” and
its suffix was taken
from “Bitek”. His evidence was that DIGITEK
was chosen as a mark to suggest modern, well-designed products for use in
the
digital age.
- Cable
was the first product sold under the trade mark DIGITEK by Bitek in January
2004. Since that time Bitek has sold products
under that mark,
including:
Antennas, cables (speaker, coaxial, data and security), leads, TV and projector
mounting brackets, switch selectors, connectors,
wall plates, splitters,
multi-switches, cable ties, cable clips, cable caddies, industrial tools,
digital set-top boxes, video senders,
video intercoms, remote
controls.
- In
May 2007 Bitek ceased selling DIGITEK branded digital set-top boxes. In August
2009 it also stopped selling remote controls.
- Bitek
sells its DIGITEK range of products to professional installers who comprise 90%
of its customers. Professional installers
carry on the business of the
installation of TV antennae and satellite equipment and accessories. The TV
antennae are for receiving
free-to-air TV signals whilst the satellite dishes
are for receiving satellite TV signals. Professional installers usually connect
or mount antennae, satellite dishes and related components by using cables,
connectors and brackets. Usually professional installers
do not supply the
television receivers, video players and CD players.
- The
remainder of Bitek’s customers (10%) for its DIGITEK range of products are
wholesalers who buy for the purpose of resale
to professional installers. Bitek
promotes its products, including the DIGITEK range of products, by using sales
representatives,
its website and by conducting regular trade nights for
customers and by attending industry trade shows. Bitek has a number of sales
representatives who visit customers and provide samples, product lists and
product brochures. Bitek’s customers order products
by either attending
Bitek’s warehouses in the States and Territories to which I have referred
or by e-mail, facsimile or over
the telephone.
- The
DGTEC trade mark has been registered for the series of word marks “DGTEC:
DGTEK: DGTECH” and has been registered
as a word series type of mark with
effect since 23 January 2002 in Class 9 in respect of “Digital and
electronic products including
televisions, video players, DVD players; CD
players, decoders and cameras”.
- Section
51 of the Act governs an application for registration of two or more trade marks
in respect of similar goods or similar services
within a single class where the
trade marks resemble each other. At the relevant time, s 51
provided:
(1) A person may make a single application under subsection 27(1) for the
registration of 2 or more trade marks in respect of similar
goods or similar
services within a single class if the trade marks resemble each other in
material particulars and differ only in
respect of one or more of the following
matters:
(a) statements or representations as to the goods or services in relation to
which the trade marks are used or are intended to be
used;
(b) statements or representations as to number, price, quality or names of
places;
(c) the colour of any part of the trade
mark;
(d) any matter that is not inherently adapted to distinguish the goods or
services and does not substantially affect the identity
of the trade
marks.
(2) If:
(a) the application meets all the requirements of this Act;
and
(b) the Registrar is required (under section 68) to register the trade
marks;
he or she must register them as a series in one
registration.
- Section
51(1)(d) has been repealed. Section 51(d) was repealed by the Trade Marks
Amendment Act 2006 on 23 October 2006. Nothing turns on the fact it was
repealed.
- Hills
contended that paragraphs (a), (b) and (c) of s 51(1) had no application to
this series of marks because there was no difference
in the goods or services to
which the trade marks are to be used: (a); no difference in the number, price,
quality or names of places:
(b); and no difference in the colour of any part of
the trade mark: (c). Therefore it contended the DGTEC trade mark registration
was effected under s 51(1)(d) on the basis that the words differ only in
respect of matters that are not inherently adapted to distinguish
the goods and
do not substantially affect the identity of the trade marks: s 51(1)(d).
It contended the Registrar proceeded on the
basis that the words DGTEC, DGTEK
and DGTECH are substantially identical to each other.
- It
contended that Bitek has not challenged this aspect of the DGTEC registered
trade mark and that therefore it would focus on the
DGTEC and DGTEK variants
rather than DGTECH which “does not take the case any higher”.
- Later
Hills used Bitek’s non-challenge on this ground to the DGTEC registered
trade mark in its argument on the non-use application
in a manner which I will
explain.
- It
is necessary to set out the issues raised in the three separate proceedings,
identify how some of those issues are common to each
of the proceedings and the
contentions made by the parties on those issues. In doing so, I will refer to
the relevant statutory
provisions as they arise.
APPEAL PROCEEDING
- Bitek’s
trade mark application was filed on 4 July 2003 and was accepted on 13 April
2004. At the time of acceptance, a statement
of goods listed the following
goods in Class 9:
Coaxial cables, data cables and accessories; TV
installation accessories including external TV antennas.
- On
15 November 2004 the company filed a notice of opposition to the registration of
the Bitek trade mark. The company opposed the
registration of the Bitek trade
mark relying on its prior registered trade mark no. 901020 which was for the
series of marks DGTEC,
DGTEK and DGTECH in respect of the goods in Class
9:
Digital and electronic products including televisions, video
players, DVD players, CD players, decoders and cameras.
- A
hearing in relation to that opposition took place in Canberra on 4 May 2006
before the delegate. After the hearing, Bitek amended
the statement of goods to
exclude set-top boxes and as a result the statement of goods in respect of which
registration was sought
became, as it is now:
TV installation
accessories including external TV antennas, none of the foregoing being set-top
boxes.
- On
11 May 2006, after Bitek had amended the statement of goods, the company’s
solicitors advised the delegate that it:
... would be happy with the result (the Hearing Officer) foreshadowed at the
hearing where digital set-top boxes are specifically
excluded from the class of
goods in (Bitek’s) registration.
- The
assignment of DGTEC trade mark from the company to Hills was registered on
4 January 2008 and Hills was entered on the Register
as the owner of the
trade mark on 17 January 2008.
- Hills
relies on s 53 of the Act for its standing to continue the company’s
opposition to the registration of the Bitek mark.
Section 53
provides:
If:
(a) after a person has filed a notice of opposition, the right or interest on
which the person relied to file the notice of opposition
becomes vested in
another person; and
(b) the other person:
(i) notifies the Registrar in writing that the right or interest is vested in
him or her; and
(ii) does not withdraw the
opposition;
the opposition is to proceed as if the notice of opposition had been filed in
that other person’s name.
- Hills
claimed that it notified the Registrar that the DGTEC mark had vested in it by
making its successful application to have itself
registered on the assignment of
that trade mark. It did not withdraw the opposition. Hills claimed that when
it was entered in
the Register as the owner of the trade mark the opposition
proceeded “as if the notice of opposition had been filed in Hills’
name”: s 53. I am satisfied that Hills was entitled to continue the
company’s opposition before the Registrar and appeal
to this Court against
the decision of the delegate.
- Where
a Registrar is faced with opposition proceedings the Registrar must proceed in
accordance with s 55 of the Act which
provides:
55 (1) Unless the proceedings are discontinued or dismissed, the Registrar must,
at the end,
decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in
respect of the goods and/or services then specified
in the
application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
(2) Without limiting subsection (1), if the application was opposed on the
ground specified in paragraph 62(a) (that the application,
or a document filed
in support of the application, was amended contrary to this Act), the Registrar
may revoke the acceptance of
the application and examine the application again
under section 31.
- On
18 January 2008 the delegate found that Bitek’s mark DIGITEK is
deceptively similar to the prior registered DGTECH/DGTEK/DGTEC
marks, but that
the goods in Bitek’s amended statement of goods were not “similar
goods” within the meaning of
s 44(1)(a)(i) of the Act to the goods
the subject of the company’s registered trade mark and, on that basis,
dismissed the
company’s opposition and allowed registration of
Bitek’s DIGITEK trade mark in respect of the goods set out in the amended
statement of goods.
- Hills
appealed against the delegate’s decision. On 16 April 2008 Hills filed an
amended notice of appeal which raises the
following grounds of
objection:
(a) Hills’ trade mark and Bitek’s trade mark are substantially
identical or deceptively similar and both are in respect
of goods which are
similar (s 44(1));
(b) the use of Bitek’s trade mark would be contrary to law
(s 42);
(c) because of some connotation that Bitek’s trade mark has its use would
be likely to deceive or cause confusion
(s 43);
(d) Bitek is not the owner of the Bitek trade mark
(s 58);
(e) the Bitek trade mark is similar to the Hills’ trade mark which is an
earlier registered trade mark that has acquired a
reputation in Australia and
because of that reputation the use of the Bitek mark would be likely to deceive
or cause confusion (s
60).
- Bitek
claims that Hills conceded in submissions made before me on 8 October 2008 that
its appeal “turned entirely on s 44(1)
of the Act”. However,
Hills pressed its grounds of opposition under ss 44, 60 and 42(b) of the
Act.
- Hills’
notice of appeal raises those issues and each party addressed those issues on
the appeal. It seems to me that the submission
made to me was not meant to be
and was not understood, at least by Bitek, to be an abandonment by Hills of its
two grounds under
ss 60 and 42(b) of the Act. However, the grounds of
appeal in paragraphs (c) and (d) referred to in [37] were not pressed.
- Section
35 of the Act provides for an appeal to this Court against a decision of the
Registrar to accept an application for registration
of a trade mark or to reject
that application. An appeal from a decision of the Registrar of Trade Marks is
heard in the original
jurisdiction of the Court and is by way of rehearing:
Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 per Branson J
at 59. The appeal is a hearing de novo: Registrar of Trade Marks v
Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365 per French J at [32].
- In
Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60,
Sundberg J said:
The nature of an “appeal” to the Federal Court under s 35 (and
in respect of a decision in an opposition proceeding under
s 56) has been
discussed at length in several cases: see Blount 83 FCR at 58D-59A
(Branson J); Kenman Kandy [2002] FCAFC 273; 122 FCR 494 at [21]- [22] (French J);
Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; (1999) 93 FCR 365 at [32]- [34]
(Woolworths) (French J). In hearing an appeal pursuant to s 35, the
Court exercises its original jurisdiction and conducts a hearing de novo.
It is
to determine on the merits the same question that was before the Registrar
— namely, whether or not the trade mark should
be accepted — and in
doing so, it is to apply the same legal criteria that the Registrar is required
to adopt under the Act.
- No
presumption arises in favour of the correctness of the delegate’s decision
but the Court will give respect and weight to
the delegate’s opinion,
being an experienced and skilled person: Registrar of Trade Marks v
Woolworths Ltd [1999] FCAFC 1020; 93 FCR 365 per French J at [33]. In considering the appeal,
the Court should have regard to the rights of the parties as at the date when
the
application for registration was made; in this case, 4 July 2003:
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR
592 per Kitto J at 594.
- Hills
has the responsibility which it accepted to establish the grounds of opposition
relied upon. Bitek argued that this Court
could only uphold any ground of
opposition if the Court were satisfied that the trade marks should clearly not
be registered: Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839 per
Cooper, Kiefel and Emmett JJ at [17]-[19]; and Kowa Co Ltd v NV Organon
[2005] FCA 1282; (2006) 66 IPR 131 per Lander J at [139]-[140].
- Hills,
on the other hand, argued that it had no higher obligation than to establish the
grounds of opposition on the conventional
ground of the balance of
probabilities. It relied on the decision of Sundberg J at 67 in Chocolaterie
Guylian NV v Registrar of Trade Marks [2009] FCA 891; 180 FCR 60, which followed a
decision of Gyles J in Clinique Laboratories Inc v Luxury Skincare Brands Pty
Ltd [2003] FCA 1517; (2003) 61 IPR 130 and Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR
787.
- In
those decisions, Gyles J (on two occasions) and Sundberg J (on the one occasion)
rejected the approach taken in earlier decisions
that an opponent to the
registration of a trade mark should satisfy the Registrar or court that a trade
mark “should clearly
not be registered”.
- The
dispute as to the standard which is to be applied on an appeal of this kind
arises out of remarks made by the Full Court in Lomas v Winton Shire Council
[2002] FCAFC 413; [2003] AIPC 91-839, the first case upon which Bitek relied. In that case
the Court said at [17]-[19]:
17 No submissions were addressed to the Court
concerning the standard to be applied by a single judge in considering an appeal
under
s 56 of the Act. The presence of s 195(2) suggests that a parallel
should be drawn with the scheme of appeals in opposition proceedings
under the
Patents Act 1990 (Cth). On that basis, on appeal under s 56, the
Court should consider whether the trade mark should clearly not be registered.
Only if so satisfied should the Court decide
to uphold an
opposition.
18 The fact that leave to appeal from the decision of a
single judge is required indicates the quasi summary nature of an opposition
proceeding. An unsuccessful opponent would always have the opportunity to bring
an expungement proceeding if the opposition proceeding
fails. In an expungement
proceeding, the validity of a trade mark can be fully explored. That is a
reason for concluding that there
should not be a full exploration of the
prospective validity of a trade mark on an appeal in an opposition
proceeding.
19 Thus, it would be inappropriate for there to be a
full exploration of the validity of the trade mark in two separate proceedings
in
the Court, first in an appeal in an opposition proceeding and then,
subsequently, if the opposition proceeding failed, in an expungement
proceeding.
Those considerations emphasise the need for the Full Court, before refusing
leave to appeal pursuant to s 195(2) of the
Act, to be satisfied that a
decision by a single judge upholding an opposition is undoubtedly
correct.
- Later
the Court said at [36]:
36 The legislative scheme relating to opposition
proceedings set out above indicates that an opponent has the onus of
establishing the
ground of opposition relied on. In the present context, that
means that Winton and the Company must establish that Ms Lomas was
not the owner
of the Trade Mark as at the Priority date, at least on the balance of
probabilities. On one view, they may be required
to establish that she was
clearly not the owner (see [17] above).
(Emphasis added.)
- In
Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd [2003] FCA 901; (2003) 132
FCR 326, Bennett J followed the decision of Emmett J in F Hoffmann-La Roche
AG v New England Biolabs Inc [2000] FCA 283; (2000) 99 FCR 56 and applied the reasoning of
Emmett J in relation to opposition proceedings under the Patents Act to trade
marks opposition proceedings which she said was consistent with the approach
which was taken by the Full Court in Registrar of Trade Marks v Woolworths
Ltd [1999] FCAFC 1020; 93 FCR 365. Subsequently, in Clinique Laboratories Inc v Luxury
Skincare Brands Pty Ltd [2003] FCA 1517; 61 IPR 130, Gyles J indicated contrary to the
decision in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd
[2003] FCA 901; 132 FCR 326 that he could not see how, having regard to the provisions of
s 55 of the Act, it can be said that a higher standard than the
conventional
standard should be applied.
- Thereafter
different judges took different positions. Kenny J applied the higher standard
in McCorquodale v Masterson [2004] FCA 1247; (2004) 63 IPR 582; and Finn J in Austereo
Pty Ltd v DMG Radio Australia Pty Ltd [2004] FCA 968; (2004) 209 ALR 93 and Cooper J in
Health World Ltd v Shin-Sun Australia Pty Ltd [2005] FCA 5; (2005) 64 IPR 495 followed
Bennett J in Torpedoes Sportswear Pty Ltd v Thorpedo Enterprises Pty Ltd
[2003] FCA 901; 132 FCR 326 as a matter of comity.
- On
the other hand, Finkelstein J reached a different conclusion which he recognised
might be inconsistent with the views expressed
in Lomas v Winton Shire
Council [2002] FCAFC 413; [2003] AIPC 91-839 and Torpedoes Sportswear Pty Ltd v Thorpedo
Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326: BP plc v Woolworths Ltd [2004] FCA 1362; (2006) 62
IPR 545.
- I
had occasion to review those authorities in Kowa Co Ltd v NV Organon [2005] FCA 1282; 66
IPR 131 and concluded that I should follow the decision of the Full Court in
Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC 91-839 and a decision of the
Full Court in Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; 93 FCR 365, and
as a matter of comity follow Torpedoes Sportswear Pty Ltd v Thorpedo
Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326 even though I doubted the correctness of
those decisions for the reasons expressed by Gyles J and Finkelstein J in the
cases to which
I have referred.
- Following
that decision, Gyles J considered the issue afresh in Pfizer Products Inc v
Karam [2006] FCA 1663; 237 ALR 787. He referred to the decisions to which I have referred
and, in particular, my decision in Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131
and said I was wrong to follow Lomas v Winton Shire Council [2002] FCAFC 413; [2003] AIPC
91-839 because the remarks in that decision were obiter and the other decision
upon which I relied was not relevant to my decision.
- He
also referred to a further decision of the Full Court in Woolworths Ltd v BP
plc [2006] FCAFC 52; (2006) 150 FCR 134 in which the Full Court addressed this issue
when considering an application for leave to appeal and gave leave on the basis
that
the question ought to be considered by the Full Court. However, after
leave was granted and the matter came before the Full Court,
the issue did not
need to be resolved. Justice Gyles in Pfizer Products Inc v Karam [2006] FCA 1663; 237
ALR 787 restated his dissent from Lomas v Winton Shire Council [2002] FCAFC 413; [2003]
AIPC 91-839.
- In
Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I said that I should follow the
decision in Lomas because it was a decision of the Full Court and I
should follow Bennett J’s decision in Torpedoes Sportswear Pty Ltd v
Thorpedo Enterprises Pty Ltd [2003] FCA 901; 132 FCR 326 as a matter of comity and because
other judges of the Court had followed that decision.
- That
is still my opinion. It may be, as Gyles J has pointed out, that the decision
in Lomas was obiter and does not strictly need to be followed but it is a
decision of the Full Court in circumstances where there are competing
lines of
authority at first instance which have left judges of this Court divided. The
conflict cannot be resolved at first instance
and must be resolved in the Full
Court. As I indicated in Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131, I favour
the reasoning of Gyles J in Clinique Laboratories Inc v Luxury Skincare
Brands Pty Ltd [2003] FCA 1517; 61 IPR 130 but thought because of Lomas v Winton Shire
Council [2002] FCAFC 413; [2003] AIPC 91-839 and comity I should follow the other line of
authority. That is still my view, notwithstanding the criticism of that
approach in
Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR
787.
Section 44
- Hills
principally relied upon s 44(1) of the Act in its opposition to the Bitek
application. Section 44(1) provides:
44 (1) Subject to subsections (3) and (4), an application for the
registration of a trade mark (“applicant’s trade mark”)
in
respect of goods (“applicant’s goods”) must be rejected
if:
(a) the applicant’s trade mark is substantially identical with, or
deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or
closely related services;
or
(ii) a trade mark whose registration in respect of similar goods or closely
related services is being sought by another person;
and
(b) the priority date for the registration of the applicant’s trade mark
in respect of the applicant’s goods is not earlier
than the priority date
for the registration of the other trade mark in respect of the similar goods or
closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if
the trade mark is substantially identical with,
or deceptively similar to, a
protected international trade mark or a trade mark for which there is a request
to extend international
registration to Australia: see Part
17A.
- Section
14 of the Act defines “similar
goods”:
14 (1) For the purposes of this Act, goods are similar to other
goods:
(a) if they are the same as the other goods;
or
(b) if they are of the same description as that of the other
goods.
- The
registration by the company of the DGTEC trade mark registration occurred prior
to the priority date for the registration of
the Bitek trade mark and, as such,
s 44(1)(b) was satisfied by Hills. Hills argued that the questions for
decision under s 44(1)
were whether the mark DIGITEK is deceptively similar
to the marks DGTEC or DGTEK and whether Bitek’s application goods are
“similar goods” or “of the same description” as
Hills’ registered goods. As I have said at [36], the
delegate answered
the first question in favour of Hills and the second question in favour of Bitek
and proceeded to registration.
- Hills
argued that the same factual issues arose under s 44(1)(a)(i) in the appeal
proceeding as arise under s 120(2) of the infringement
proceeding, save for
any relevant difference between Bitek’s used goods which are to be
considered under the infringement proceeding,
and Bitek’s application
goods which are to be considered under the appeal proceeding.
- It
was Hills’ argument that there were sufficient similarities between
Bitek’s used goods and Bitek’s application
goods that the same
conclusion under s 120(1) of the Act should be reached under
s 44(1)(a)(i); that is, that DIGITEK and DGTEK are
deceptively similar and
the respective goods are the same.
Deceptive Similarity
- Although
s 44(1) is engaged when two marks are “substantially identical with,
or deceptively similar to” each other,
Hills did not assert that its mark
DGTEC and Bitek’s mark DIGITEK were substantially identical but relied
solely upon the claim
that the marks were deceptively similar to each
other.
- Hills
submitted that DGTEC and DIGITEK were deceptively similar in terms of sound,
appearance and meaning.
- Hills
claimed that the appropriate test was whether there is a real risk that a
significant number of consumers, having an imperfect
recollection of
Hills’ registered trade mark DGTEC will entertain a reasonable doubt as to
whether DGTEC and DIGITEK products
come from the same source: Southern Cross
Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592 per Kitto J and
Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; 93 FCR 365 per French J;
E & J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2009] FCAFC 27; (2009) 175 FCR
386 at [75]. Bitek did not dispute that to be the appropriate test.
- In
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592,
Kitto J said at 595:
It is not necessary, in order to find that a trade mark offends against the
section, to prove that there is an actual probability
of deception leading to a
passing-off. While a mere possibility of confusion is not enough—for
there must be a real, tangible
danger of its occurring—it is sufficient if
the result of the user of the mark will be that a number of persons will be
caused
to wonder whether it might not be the case that the two products come
from the same source. It is enough if the ordinary person
entertains a
reasonable doubt.
- Bitek
did not argue otherwise.
- With
that in mind, I turn to the evidence and the submissions made by the parties in
relation to matters which Hills said would satisfy
that test.
- I
will first address the question whether the marks are deceptively similar and
then the question whether they are so in respect
of similar
goods.
Similarity in Sound
- Hills
submitted that the marks DGTEC and DIGITEK are sufficiently similar in sound to
create a real risk of confusion amongst a significant
number of consumers.
Hills’ witnesses, including Mr Cormick gave evidence that DGTEC was
pronounced “dijitek”.
- Bitek
refuted Hills’ evidence and disputed Hills’ submissions that DGTEC
was pronounced “dijitek”. Bitek
argued that the marks are aurally
different and, to that extent, relied upon the evidence of Dr Burton, a reader
in English at the
University of Adelaide, that there are two different natural
or ordinary pronunciations of the Hills’ mark neither of which
accorded
with Hills’ contentions, being:
(a) Dee Gee Tee Eee See;
and
(b) Dee Gee Tec
Bitek argued that both of those pronunciations were different from that of
the Bitek trade mark which is pronounced “dijitek”.
- Bitek
submitted that the pronunciation suggested by Hills does not accord with the
ordinary and natural pronunciation of “DGTEC”.
It asserted that the
evidence of wholesale distributors such as Mr Manicastri and Mr Kaczmarczyk
indicated that DGTEC is pronounced
“Dee Gee Tec” not
“dijitek”. Further, Bitek argued that Hills’ own customer
service message, a recording
of which was played in Court, pronounced DGTEC as
“Dee Gee Tec”.
- In
its closing submissions, Hills argued the evidence in [69] was not relevant but,
if relevant, little weight should be attached
to such evidence. Hills submitted
that in determining deceptive similarity between two marks, the task of the
Court is not to engage
in a side by side, meticulous comparison of DGTEC and
DIGITEK: Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1963)
109 CLR 407 per Windeyer J at 415. Hills argued that the Court should refrain
from the type of detailed phonetic comparison suggested by Bitek
and on that
basis asked the Court to reject Bitek’s evidence.
- In
the alternative, Hills submitted that Bitek’s evidence, taken at its
highest, does not rule out the possibility that a significant
proportion of
relevant consumers would pronounce DGTEC as “dijitek” demonstrating
a likelihood of confusion in the marketplace.
- I
do not agree with Hills’ claim that Bitek’s evidence was irrelevant
because it meant that the Court would need, if
it used the evidence, to engage
in a “side by side” comparison of the marks. The question of how
the marks might be
pronounced is relevant in determining whether the requisite
degree of confusion will be caused. To consider that aspect is not to
compare
the marks side by side.
- However,
that does not mean that the evidence should be given more weight than it
deserves. The question is one for the Court.
- In
what manner would the marks be used in ordinary speech? There can be no doubt I
think that Bitek’s mark is pronounced “dijitek”.
Indeed,
Hills did not argue otherwise. The three vowels in the “word” make
that pronunciation inevitable.
- It
might be as Dr Burton says that the Hills’ mark might be spoken of in the
two separate ways he mentioned. I think, however,
because of the number of
letters in the mark, that it is unlikely that the word will ordinarily be spelt
as in “Dee Gee Tee
Eee See”. It is more likely that it will be
spoken as “Dee Gee Tec”. That is consistent with the evidence of
the installers and the Hills’ customer service message. If that is the
way the Hills’ mark is spoken, then it is different,
but not very much so,
than the spoken Bitek mark. The two pronunciations are “Dee Gee
Tec” and “dijitek”.
The pronunciations are quite similar.
The Hills’ mark has a hard “g” and the Bitek mark a soft
“g”
or “j”. I think the way in which the marks are
spoken will lead to confusion.
- The
delegate was of the same opinion. She thought that “Australians are
notoriously careless in their speech and DIGITEK and
DGTEC are likely to be
pronounced in the same fashion”.
Similar in Appearance
- Bitek
asserted that the marks DGTEC and DIGITEK convey different visual impressions.
The DIGITEK mark is in the form of a readily
pronounceable word whereas it
asserted DGTEC is “no more than a collection of alphabetic
characters”.
- I
do not agree with Bitek’s contention in this regard. The marks are not
the same, nor could they be but they are at first
sight visually similar.
Whilst the Hills’ mark does not have a vowel between the “D”
and the “G”,
at first sight that is not obvious.
- I
do not think that the ordinary person will view the Hills’ mark as a
collection of “alphabetic characters” but
will see it as a word
which, because of the absence of that vowel, is pronounced in the way I have
suggested.
- The
difference in the last letter of each mark is of no consequence at all. I think
the marks are similar in appearance. In this
respect I disagree with the
delegate who was of the opinion that the marks did not so heavily resemble one
another that confusion
or deception was likely.
Similarity in Meaning
- Hills
argued that the marks DIGITEK and DGTEC are deceptively similar in that they
share the common idea of combining the first element
of each of the words
DIGITAL and TECHNOLOGY. Hills submitted that an essential and distinguishing
feature of DGTEC is the creation
of a brand name from the first parts of the
words DIGITAL and TECHNOLOGY: Crazy Ron’s Communications Pty Ltd v
Mobileworld Communications Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1 at [79]–[90]. It
argued that because an essential feature of the DGTEC mark has been incorporated
into DIGITEK mark, there is a real
likelihood of confusion amongst consumers.
- Bitek
admitted that the name DIGITEK was created by using the first letters of
DIGITAL. However, Bitek submitted, contrary to Hills’
contention, that
the suffix TEK was chosen to ensure consistency with Bitek.
- I
think the marks have a similar meaning. Dealing first with the second element
“TEC” and “TEK”, I think
that consumers would see those
letters as incorporating Technology especially having regard to the goods to
which both marks relate.
- As
to the first element I think Hills’ argument should be accepted. The
letters “DG” and “DIG” do
convey a meaning relating to
“DIGITAL”, especially when used with ‘TEC” and
“TEK”. That again
is reinforced because of the goods to which the
marks relate. I think the two marks convey the same meaning and that is that
they
are associated with digital technology.
- For
all those reasons, I am of the opinion that the marks are deceptively similar.
I agree with the conclusion reached by the delegate.
- The
next question is whether the marks are deceptively similar in respect of similar
goods.
Similar Goods
- Hills
submitted that its registered Class 9 goods and Bitek’s TV installation
accessories are “similar goods” for
the purposes of
s 44(1)(a)(i). As mentioned above, because of s 14(1)(b) of the Act,
goods are similar if they are “of the
same description” as the other
goods. Bitek denied that its goods and Hills’ goods are “goods of
the same description”.
- The
point of time at which this question is to be answered is at the priority date:
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592 at
595.
- In
determining whether particular goods are “goods of the same
description”, the Court will consider a number of the
factors which were
identified by Romer J in Jellinek’s Application (1946) 63 RPC 59
including:
(a) the nature of the goods;
(b) the uses of the goods; and
(c) the trade channels through which the goods are bought and sold.
- That
decision was considered in Southern Cross Refrigerating Co v Toowoomba
Foundry Pty Ltd 91 CLR 592, and the High Court said at
606:
The fact that examination of the nature of the applicant’s goods may, by
itself, induce an observer to conclude that they are
different in character from
those of an opponent, and designed to serve different purposes, is by no means
conclusive. Nor is the
fact that the applicant’s goods are not specified
by the regulations as being within the same class of goods: see In re The
Australian Wine Importers Ltd and Reckitt & Colman (Australia)
Ltd. v. Boden per Latham C.J. There may be many matters to be
considered apart from the inherent character of the goods in respect of which
the application
is made and some indication of what matters are relevant to this
inquiry was given by Romer J. in In re Jellinek’s
Application. Romer J. thought it necessary to look beyond the nature
of the goods in question and to compare not only their respective uses but also
to examine the trade channels through which the commodities in question were
bought and sold.
(Footnotes omitted.)
The Court said further, after referring to another decision, at 606-607:
“... No single consideration is conclusive in itself, and it has further
been emphasized that the classifications contained
in the schedules to the Trade
Marks Rules are not a decisive criterion as to whether or not two sets of goods
are ‘of the same
description’”: In re an Application by
John Crowther & Sons (Milnsbridge) Ltd. Much the same considerations
are evidence in the observation of Dixon J. (as he then was) in
Reckitt & Colman (Australia) Ltd. v. Boden when he said: “What
forms the same description of goods must be discovered from a consideration of
the course of trade or business.
One factor is the use to whch the two sets of
goods are put. Another is whether they are commonly dealt with in the same
course
of trade or business.
(Footnotes omitted.)
- Hills
and Bitek addressed each of those factors. Hills undertook a comparison of
televisions (within Hills’ registered goods)
and television antennas
(within Bitek’s goods). Bitek compared its TV installation accessories
with Hills’ goods which
Bitek described as “brown goods” to
distinguish them from Bitek’s goods.
- At
the priority date the only product that Hills marketed under its mark DGTEC were
set-top boxes. It had not at that time extended
the brand to remote controls,
digital video recorders with hard drive, televisions, CD and MP3 players, DVD
players, micro sound
systems, iPod docking speakers and web-based cameras. By
the time of the hearing before the delegate those goods were sold under
the
DGTEC mark.
- Whilst
Hills’ statement of goods for the DGTEC, DGTEK and DGTECH marks did not
use the expression “set-top boxes”,
it was common ground that they
were included in Hills’ statement of goods as “decoders”.
- As
I have said, after the hearing in Canberra on 4 May 2006 Bitek amended the
statement of goods to exclude set-top boxes so that
its proposed statement of
goods was for:
TV installation accessories including external TV antennas, none of the
foregoing being set-top boxes.
- At
the priority date Hills sold only one product under the DGTEC mark being set-top
boxes and Bitek sought registration of its mark
for goods which specifically did
not include set-top boxes.
- It
seems to me that at that date it could not be said that the goods marketed under
the registered mark and the goods the subject
of the Bitek application were
similar goods or goods of the same description. Indeed, it could be positively
said that they were
not similar goods or goods of the same description.
- However,
Hills argued that its registered mark included goods of a wider description and
that Bitek’s amended application had
to be considered against the
Hills’ statement of goods. The parties therefore embarked upon a notional
factual inquiry where
goods of the kind included in the respective statement of
goods were marketed and sold. For example, Hills sought to prove that
goods of
the kind which it sold were sold and marketed in a particular manner. Evidence
was led by Bitek as to the goods it marketed
under its mark, their use and the
manner in which they were marketed. Hills did not rely on evidence of the sale
and marketing of
its DGTEC products for the purposes of its s 44(1) case
although Hills did rely on evidence of that kind to defend Bitek’s
non-use
claim. It relied upon general evidence of sales and marketing of like products.
Hills criticised Bitek’s evidence
which it said descended on occasions
into actual sales and markets and failed to remain at the notional level.
- There
is a risk in that approach which I have attempted to avoid in that the inquiry
might descend into determining the question
not at the priority date but at the
date of the hearing.
Nature of the Goods
- Hills
argued that the inherent nature of the goods registered in respect of DGTEC and
those goods Bitek seeks to have registered
under the name DIGITEK were
comparable. Its submission was that Bitek’s TV installation accessories
fall within Hills’
registered goods in that they “are all products
made to interoperate with each other for the use and enjoyment of home
entertainment
systems”.
- Bitek
argued that its goods and Hills’ registered goods are of a fundamentally
different nature. It asserted that TV installation
accessories capture and
convey signals to brown goods and act to connect such goods or physically
support such goods. Alternatively,
brown goods process signals into a visual
and/or audible format.
- It
would be useful at this point to identify the TV installation accessories which
comprise Bitek’s goods. Bitek relied on
the evidence of three wholesale
store operators.
- Mr
Manicastri’s evidence was that TV installation accessories include
antennas, cables, brackets and mountings, connectors
and cords that “are
necessary to be used to allow or assist the electronic components of a TV
installation to perform their
function”. TV installation accessories are
not electronic products. TV installation accessories are items which provide
physical
support to components of the installation or the items that capture a
TV signal and allow it to be directed to electronic components.
TV installation
accessories do not process signal and do not contain circuitry or operate on
electrical current.
- Mr
Kaczmarczyk said that TV installation accessories are items which capture and
convey signal to an electronic product including
antenna, satellite dish,
mounting hardware, cabling, connections and amplifiers.
- Mr
Gigliotti said that TV installation accessories include antenna, audio and video
leads, connectors, splitters and brackets.
- None
of those witnesses were cross-examined.
- Mr
Griggs, to whom I have already referred, said that a professional person in the
industry would describe TV installation accessories
as everything between the
antenna and back of the television (does not include antenna, television or
set-top box). He said a lay
meaning of the expression would mean everything
which is accessory to the viewing of the television: all the accessories between
the antenna and the television, including the antenna itself, the television and
a set-top box as well as remote controls, home theatre
equipment, stands,
cabinets and other things “accessory” to an installed television
viewing set up. Later in his affidavit
he described actual
accessories:
– antenna
– cable
– amplifiers
– splitters
– power supplies
– brackets
– AV leads
– diplexers
– AV selectors
– connectors/adaptors
– remote controls
– video intercoms
- I
do not accept Mr Griggs’ evidence in respect of what he called the lay
meaning. The expression is TV installation accessories.
I cannot think that
anyone would think that the television itself was an accessory. I also do not
accept his evidence that a professional
person would not include an antenna in a
TV installation accessory. Indeed, in his cross-examination he admitted that to
define
TV installation accessories to include all items which capture and convey
the signal to the electronic product would not be to give
the term a
“strained meaning”.
- I
prefer the evidence of Bitek’s witnesses which is generally the same and
the particular evidence of Mr Kaczmarczyk.
- I
accept Bitek’s argument. The goods are fundamentally different. The
brown goods which comprise the Hills products are goods
which are digital and
electronic and provide the display to the consumer visually or audibly.
Bitek’s goods are as they have
said; goods which allow the brown goods to
function. They provide support of varying types to the brown
goods.
Use of Goods
- Hills
submitted that televisions cannot properly function to display terrestrial
television broadcasts without an antenna. The two
goods are therefore closely
linked because “the quality and performance of the antenna has a vital
impact upon the viewer’s
digital television experience”.
- Further,
Hills argued that there is a real likelihood of confusion between DGTEC branded
products and DIGITEK products due to the
close proximity in which they are used.
Hills annexed a diagram to its Closing Submissions which, it argued,
demonstrated the use
of DIGITEK and DGTEC products within a household and the
likelihood of confusion which may arise therefrom.
- Bitek
took issue with Hills’ claim that televisions and television antennas are
goods of the same description because a television
cannot properly operate
without an antenna. It submits that functional interdependence of goods should
not be the sole determinant
of whether the goods are similar goods or goods of
the same description. The fact that TV installation accessories can be used in
conjunction with brown goods does not mean that customers are likely to be
confused.
- It
is right as Hills contend that the goods are interdependent and they rely on
each other for their functionality. However, that
does not take the matter far.
Whilst the goods cannot operate on their own, they are not interchangeable.
They are not “commonly
used as alternatives or substitutes” for each
other: New South Wales Dairy Corporation v Murray Goulburn Co-op
Corporation (1989) 14 IPR 75. In that regard they are quite different
classes of goods to those discussed in E & J Gallo Winery v Lion Nathan
(Australia) Pty Ltd [2009] FCAFC 27; 175 FCR 386. They each have their uses which are quite
separate and distinct even though when they are put together they assist to
perform the
end function: Re Jellinek’s Application 63 RPC
59.
Trade Channels
- The
evidence on this aspect became a little confused because Bitek relied upon its
own actual marketing rather than use at the notional
level. Bitek asserted that
the method of sale of its goods differed from Hills. It submitted that its TV
installation accessories
are sold to trade customers (professional installers)
or wholesale distributors via its factory shopfronts, website, sales
representatives
and by telephone, fax or email. It contended that Hills’
goods are purchased by ordinary retail customers from mainstream
retail outlets
such as Retravision, Myer and Harvey Norman.
- Hills
submitted that the evidence demonstrates that goods of a kind which Hills market
and goods of the kind which Bitek markets
are sold through the same or
overlapping channels at both the wholesale and retail level.
- Hills
relied on Bitek’s Mr Gigliotti’s evidence. He said that the goods
the subject of the Hills registration, including
televisions, DVD players and
video players were stocked and sold by wholesale distributors including Radio
Parts and Easy Living
Technology. Those wholesale distributors also stocked and
sold Bitek’s TV installation accessories. Mr Gigliotti’s
evidence
was that Radio Parts and Easy Living Technology sold those products to
electronic retailers such as Betta Electrical, Retravision
and Home
Electronics.
- Mr
Gigliotti also gave evidence that Bitek sold its DIGITEK branded products,
including cables, leads, plugs, connectors and digital
set-top boxes, to an
electronics retailer, Leading Edge Super Store. This retail store also stocked
and sold a range of consumer
electronics including televisions, DVD players and
video players.
- Hills
submitted that the fact retailers and wholesalers stocked, sold or distributed
Bitek’s TV installation accessories as
well as goods the subject of
Hills’ registration such as televisions, DVD players and video players
demonstrates that there
has been and most likely will continue to be overlapping
sales of Hills’ and Bitek’s goods. Of course in that regard
Hills,
contrary to its submission as to the way in which the inquiry should be
conducted, was relying on actual use of the marks.
- Bitek
conceded that it sold its products to a retailer, Leading Edge Super Store.
However, it submitted that this was the only retailer
to which it supplied its
goods and the supply related to a limited range of goods. It emphasised that
its products were primarily
sold to trade customers or wholesalers.
- Hills
adduced evidence that registered products of the kind the subject of the
Hills’ mark were displayed and sold in close
proximity to TV installation
accessories in leading electronic retailers including Dick Smith, Tandy, Harvey
Norman and Myer. Hills
alleged that that evidence illustrated that, although
predominantly distributed at the wholesale level, Bitek’s goods are likely
to enter the public retail sphere alongside Hills’ registered goods.
However, the evidence did not go and could not go as
far as to prove that the
Hills’ and Bitek’s goods were sold by the same retailer.
- Bitek
submitted that to the extent that television installation accessories appear in
retail stores they are displayed in different
ways to brown goods (the goods of
the kind the subject of the Hills’ mark). TV installation accessories are
commonly displayed
by retailers in blister packs hanging in racks. Brown goods
are likely to be displayed in working condition in order to demonstrate
the
features, styling and performance of the product to be seen by consumers.
- Bitek
argued that consumers of brown goods are concerned with brand names while
consumers of TV installation accessories have regard
to reliability and price
over brand. It argued that consumers of TV installation accessories do not rely
upon the brand. That contention
is important for reasons which will appear
later. Styling is important for brown goods as they are commonly visible when
installed
and in operation. In contrast, Bitek submitted TV installation
accessories are typically out of view (in wall cabling, mounting
brackets) or
camouflaged (eg wall plates) when installed or in use.
- Bitek
submitted that there was a clear difference in price between goods of the kind
under the Hills’ brand and Bitek’s
TV installation accessories.
- Bitek
argued that the two sets of goods are promoted in different ways. Bitek does not
direct its promotions to retail customers,
but to trade customers. On the other
hand, DGTEC branded goods are advertised by retailers in their catalogues and
newspaper advertisements.
- As
I have mentioned earlier, the evidence on this topic at least on Bitek’s
part strayed into evidence of actual sales and
marketing. However, the clear
impression I have is that goods of the kind under the Hills’ mark are
marketed at the retail
level and by direct advertising to consumers. TV
installation accessories are mainly sold to professional installers at the
wholesale
level. A retail store may have for sale some accessories but only as
a side line.
- Where
a retail store does have TV accessories for sale it does not display them in the
same manner as brown goods. Brown goods are
used as the bait for consumers.
Consumers want to see the product which will at least from the consumers’
point of view deliver
the visual image or audible sound. TV installation
accessories do not have the attraction from a sales point of view that brown
goods have.
- Hills
and Bitek both made submissions regarding the Full Court’s decision in
E & J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2009] FCAFC 27; 175 FCR 386. In
that case the question was whether beer and wine were goods of the same
description.
- Hills
argued that there were three key factors which led the Full Court to determine
that beer and wine were goods of the same description:
both beer and wine were
sold by the same retailers; both products were distributed by the same major
wholesale distributors; and
both products were produced by large producers of
alcoholic beverages.
- Hills
submitted that the same circumstances exist in this case in respect of
Hills’ registered goods and Bitek’s TV installation
accessories.
The evidence establishes that brown goods and TV installation accessories are
sold by the same mainstream electronic
retailers (Tandy, Dick Smith, Harvey
Norman and Myer); both brown goods and TV installation accessories are
distributed by the same
wholesale distributors (Radio Parts and Easy Living
Technology); and brown goods of the kind sold under the DGTEC brand by Hills
and
TV installation accessories of the kind sold by Bitek are manufactured and sold
by the same manufacturers, such as Hills. Hills
submitted that such evidence
“points compellingly to the conclusion” that its registered goods
and Bitek’s goods
are “of the same description”.
- Bitek
submitted that the Full Court’s finding that beer and wine were goods of
the same description turned on the fact that
the radler beer and wine were both
“alcoholic beverages” and intended to be alternatives. Bitek argued
that the facts
in this case are distinguishable from E & J Gallo Winery v
Lion Nathan (Australia) Pty Ltd [2009] FCAFC 27; 175 FCR 386 because its goods and
Hills’ registered goods cannot be considered alternatives or substitutes.
TV installation accessories
perform essentially different functions to brown
goods. For this reason, Bitek asserted that the conclusion reached by the Full
Court is not open to me on the facts of this case.
- In
determining that Lion Nathan’s beer and wine were goods of the same
description, the Full Court said at 407-8:
The primary judge accepted that there were a number of factors which supported
the view that Lion Nathan’s beer and wine were
goods at (sic) the same
description. They were both alcoholic beverages and generally distributed by
this (sic) same major wholesale
distributors. The beer was intended to be an
appealing alternative to wine and in developing the product, Lion Nathan
deliberately
set out to attract people who did not drink beer. Indeed it was
developed with the deliberate objective of enticing consumers who
previously
drank wine but not beer. Producers of alcoholic beverages are no longer
confined to the production of beer, as opposed
to wine, and large producers of
alcoholic beverages now produce a range of products and market themselves as
doing so. Companies
which were once brewers now market and distribute a range
of products including beer, wine, spirits, cider and non-alcoholic drinks.
Wine
and beer are now frequently distributed by the same retailers. We agree that
these matters point, and in our opinion point
convincingly, to Lion
Nathan’s beer and wine being goods of the same
description.
- In
my opinion, a critical fact which moved the Full Court to describe wine and Lion
Nathan’s beer as goods of the same description
was that in the market in
which they were sold they were interchangeable. They were both alcoholic
beverages competing in the same
market. Lion Nathan had introduced the radler
beer for the specific purpose of appealing to the wine drinking market. As
noted
by the Full Court at [72], the beer had been developed “with the
deliberate objective of enticing consumers who previously
drank wine”.
The beer was therefore intended to compete with wine and encourage wine drinkers
to consume radler beer as an
appealing alternative. That is not the case on
this appeal. These goods are not interchangeable. TV installation accessories
cannot
be considered alternatives to brown goods. At most they are
complementary.
- The
Full Court also placed weight on the fact that some large manufacturers of beer
and wine produce a wide range of products including
beer, wine, spirits, cider
and non-alcoholic drinks. Hills argued by analogy that manufacturers of brown
goods also manufacture
TV installation accessories and for that reason the Court
should find the goods are of the same description. However, the only evidence
to support Hills’ claim is its own evidence that it produces both brown
goods and TV installation accessories. Hills did not
attempt to establish that
other major manufacturers of brown goods also manufactured TV installation
accessories. Bitek submitted
that major manufacturers of brown goods do not
also manufacture TV installation accessories.
- The
Full Court also considered the fact that both beer and wine were generally
distributed by the same major wholesale distributors
as supporting a finding
that the goods were of the same description. In that case, there was evidence
that wine and beer were distributed
by national wholesalers including Australian
Liquor Marketers, Independent Liquor Group and National Independent Liquor
Wholesalers
Association. The evidence on this appeal does not support a finding
that TV installation accessories and brown goods are distributed
by the same
major wholesalers as is the case in respect of beer and wine. The only evidence
of brown goods and TV installation accessories
being distributed by the same
wholesalers was by regional stores Radio Parts and Easy Living Technology.
- For
all of those reasons, the Full Court decision does not bear directly on the
issues to be decided on this appeal.
- 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 [2002] FCAFC 413; [2003] AIPC 91-839 or in Clinique
Laboratories Inc v Luxury Skincare Brands Pty Ltd [2003] FCA 1517; 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).
- Section
44(3) provides:
(3) If the Registrar in either case is satisfied:
(a) that there has been honest concurrent use of the 2 trade marks;
or
(b) that, because of other circumstances, it is proper to do
so;
the Registrar may accept the application for the registration of the
applicant’s trade mark subject to any conditions or limitations
that the
Registrar thinks fit to impose. If the applicant’s trade mark has been
used only in a particular area, the limitations
may include that the use of the
trade mark is to be restricted to that particular
area.
- In
addressing that argument the underlying assumption is that Hills has established
that the marks are deceptively similar (with
which I agree) and that the marks
relate to similar goods or goods of the same description (with which I
disagree).
- Bitek
argued that s 44(3) allows the Court to permit registration of a mark which
would otherwise be refused under subsections (1)
or (2) of s 44, which
meant that s 44(3) implied a tolerance to a degree of confusion in the
market place. I agree with that submission.
Section 44(3) assumes that there
are circumstances where it would be appropriate to permit registration of a mark
notwithstanding
that that mark is deceptively similar to a registered mark in
respect of similar goods or goods of the same description.
- Section
44(3) would permit registration of such a mark if the applicant for registration
were able to satisfy the Registrar or the
Court of one or other of the two
matters in paragraphs (a) or (b) of s 44(3). If the applicant for
registration can make out the
threshold tests in either paragraph, the Registrar
or the Court in the exercise of discretion may accept the registration subject
to conditions. A particular condition is mentioned in s 44(3) as itself.
Conditions which might be imposed would include conditions
which would minimise
or ameliorate the risk of deception or confusion in the market place. An
appropriate condition would be a condition
which preserves the integrity of the
Register.
- It
said that Bitek’s use of the mark subsequent to the date of lodgement of
the application for the mark may be taken into
account as a positive factor in
the exercise of the discretion. The other matters to be taken into account, it
was submitted, were
that there had been no actual confusion; the parties
operated in different markets; and “the balance of inconvenience”
lies with Bitek. In that regard, Bitek relied upon the use of the mark after
2004 which, if registration of the the mark were now
denied, Bitek’s
reputation in the DIGITEK mark would be destroyed.
- It
said regard should be had to the indication of consent earlier given by the
company on 11 May 2006 that it would be satisfied
if set-top boxes were excluded
from the goods covered by the registration. It also said that regard ought to
be had to the commercial
honesty which Bitek had exhibited in adopting the
DIGITEK mark by the use of the prefix and suffix to which I have already
referred.
- Bitek
relied on both paragraphs (a) and (b) of s 44(3) to support registration in
the event that the Court found Hills had established
its opposition to
registration under s 44(1).
Section 44(3)(a)
- The
discretion which is given by s 44(3)(a) will arise for consideration if the
applicant can establish an honest concurrent use
of its mark and the
opponent’s mark.
- Bitek
asserted that the elements of s 44(3)(a) have been made out. It adduced
evidence of six years of concurrent use and approximately
$11 million worth of
sales from January 2004 to the date of trial. It argued there is no evidence to
suggest that Bitek’s
adoption of the DIGITEK mark was other than
honest.
- Hills
did not argue that Bitek’s use was not honest or, in particular, that the
use had not been commercially honest: Re Parkington & Co Ltd’s
Application (1946) 63 RPC 171 at 182. That aspect of paragraph (a) does not
need to be further addressed.
- However,
Hills argued that s 44(3)(a) was not engaged at all because all of the
evidence of concurrent use related to use after the
priority date (4 July 2003).
Bitek made no use at all of its DIGITEK mark before the priority date. The
first sale of DIGITEK branded
products was January 2004.
- The
evidence was as Hills asserted. There was no evidence of any use by Bitek of
the DIGITEK mark in relation to any goods before
the priority date.
- Hills
submitted that evidence of use after the priority date was not relevant because
the rights of the parties to an opposition
to registration are to be determined
at the date of application for registration: Southern Cross Refrigerating
Co v Toowoomba Foundry Pty Ltd 91 CLR 592 at 595 per Kitto J;
Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020; 93 FCR 365 per French J at 383;
McCormick & Co v McCormick [2000] FCA 1335; (2000) 51 IPR 102 at 111. Hills also
relied on the decision of a delegate of the Registrar in Re Simac SpA
Macchine Alimentari’s Application (1987) 10 IPR 81. In that case, the
delegate asserted that a consideration of honest concurrent use after the
priority case would
be inconsistent with the accepted principle set out in
Southern Cross. Hills also relied on six subsequent cases by delegates
of the Registrar which followed that decision: Re Application by Coles Myer
Ltd (1993) 26 IPR 577; Lister v Stingray Surf Company Pty Ltd [1997] ATMO 3; (1997)
37 IPR 306; Aromas Pty Ltd v Aroma Coffee & Tea Co Pty Ltd (1997) 40
IPR 75; South Cone Inc v Stockline Pty Ltd (2001) 52 IPR 575; Safety
Step (NZ) Ltd v Illinois Tool Works Inc [2007] ATMO 78; Trepper v Miss
Selfridge Ltd (1991) 23 IPR 335. Hills asserted that those decisions
demonstrate that the only evidence relevant to ascertaining the extent of
concurrent use is that use which has taken place prior to lodgement of the
application for registration.
- Bitek
argued that the Court can have regard to concurrent use after the priority date.
It relied on the decision of Hammond J in
VB Distributors Ltd v Matsushita
Electric Industrial Co Ltd (1999) 53 IPR 466; the Privy Council in
Hannaford & Burton v Polaroid Corporation [1976] 2 NZLR 14 (PC); and
a decision of a delegate of the Registrar in Richard James Pty Ltd v Grant
Oliver Investments [2005] ATMO 18. Bitek also referred to a number of
decisions in which delegates have had regard to events occurring after the
priority date: Trussardi SpA v Rundles Pty Ltd (1993) 25 IPR 503;
Emdon Investments Pty Ltd v Shell International Petroleum Co Ltd (1988)
12 IPR 525; Dinning v New Balance Athletic Shoe Inc (1992) AIPC 90-931;
Lister v Stingray Surf Company Pty Ltd [1997] ATMO 3; 37 IPR 306; Analyses Conseils
Informations ACI v Iguassu (No.16) Pty Ltd [2001] ATMO 4; Richard James
Pty Ltd v Grant Oliver Investments [2005] ATMO 18.
- Hills
sought to distinguish VB Distributors Ltd v Matsushita Electric Industrial Co
Ltd 53 IPR 466 on two grounds: first, that the comments of Hammond J were
obiter; and secondly, the comments were inconsistent with Kitto J’s
reasoning in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd
91 CLR 592. Hills contended that the Court should not follow the decisions of
delegates of the Registrar of Trade Marks cited by
Bitek in which
post-application date use has been taken into account in the exercise of
discretion under s 44(3) for two reasons:
that those decisions are not
binding on the Federal Court; and that they are irreconcilable with Southern
Cross Refrigerating Co v Toowoomba Foundry Pty Ltd 91 CLR 592.
- Hills
contended that it would be a curious result if s 44(1) and s 44(3)
were to be considered at separate times. Bitek’s
response was that
s 44(3) is concerned with actual market use as opposed to notional use
under s 44(1) so that the Court may take
into account post-application use
in a consideration of s 44(3). Even if the Court determines that the
registration of a mark should
be rejected under s 44(1), s 44(3) acts
to relieve an applicant to allow registration if the realities of use
demonstrate that the
justice of the case so demands.
- Although
Bitek did not rely upon the decision, Hills referred to but submitted that the
Court should not follow the decision of Carr
J in PB Foods v Malanda
[1999] FCA 1462; (1999) 47 IPR 47 in which his Honour took into account post-application date
material in the exercise of his discretion under s 34(1) of the Trade
Marks Act 1955 (Cth).
- Justice
Carr said that s 34(1) provided an “exception to the normal
registration process”. He said at [71]:
There is a discretion to be exercised and, although there does not appear to be
any authority directly on point, it seems to me that,
to some extent, matters
occurring after the application date may be taken into consideration in the
exercise of that discretion.
- The
post-application date material which Carr J said could be taken into account
related to the intentions of the parties, but was
not evidence of actual use.
Justice Carr reached his decision to exercise his discretion to allow
registration on the basis of honest
concurrent use because there was evidence of
use prior to the priority date. His Honour’s comments in relation to
post-application
material must be regarded as obiter.
- In
my opinion, evidence of concurrent use after the priority date is not relevant
in regard to an application under s 44(3)(a).
Section 44(3)(a) is
only engaged if a finding has been made under s 44(1). It is agreed that
the evidence relevant to an opposition
under s 44(1) for the registration
of a trade mark is evidence prior to the priority date. It would be most
unusual if, having determined
that the applicant’s trade mark was
deceptively similar to the trade mark registered by another person in respect of
similar
goods at a particular time, the Registrar or the Court, as in this case,
is entitled to exercise its discretion in favour of the
applicant having regard
to use of that mark at a different time.
- It
seems to me that s 44(3)(a), which allows the exercise of discretion if
there has been an honest concurrent use of the two trade
marks, is speaking of
the same time as s 44(1), ie., before the priority date. Such a conclusion
is consistent with Southern Cross Refrigerating Co v Toowoomba Foundry Pty
Ltd 91 CLR 592 and the assumption made by Kenny J in McCormick &
Co v McCormick [2000] FCA 1335; 51 IPR 102 at 111 who when addressing s 44(3)(a) and
citing decisions of the Registrar said that the rights of the parties are to be
determined
as at the date of the application for registration.
- In
those circumstances, I reject the evidence tendered by Bitek in relation to the
honest concurrent use of the mark and if the question
had arisen would have
declined to exercise my discretion in favour of Bitek under s 44(3)(a)
because of an absence of evidence in
relation to an honest concurrent use prior
to the priority date.
Section 44(3)(b)
- Bitek
also relied upon s 44(3)(b) of the Act as a source of power for the Court
to exercise its discretion to register the DIGITEK
mark. It advanced four
arguments in support.
- First,
Bitek would suffer significant inconvenience as it would have to forfeit its
accrued goodwill in the mark and incur considerable
cost in finding another mark
and re-badging its goods.
- Secondly,
Bitek alleged that no commercial harm would be suffered by Hills if registration
was permitted. In this respect it refers
to Mr Cormick’s admission that
registration of the Bitek mark would only be a “source of
irritation”.
- Thirdly,
Bitek was prepared to give an undertaking that it would not promote or sell
set-top boxes under and by reference to the
mark sought to be registered.
- Finally,
Bitek submitted that Hills consented to, or at least demonstrated indifference
to, the registration of the DIGITEK mark
after set-top boxes were excluded from
the goods for which Bitek was seeking registration.
- Bitek
submitted that in these circumstances it would be proper for the Court to
exercise its discretion under s 44(3)(b) and order
registration of the
mark.
- Hills
took issue with Bitek’s claim of inconvenience on the basis that any
goodwill which Bitek claimed would be destroyed
by non-registration accrued
after the priority date. Hills maintained that in a consideration of the
exercise of discretion under
s 44(3)(b) the Court may only have regard to
use prior to the priority date. It submitted that it would be a curious
construction
that s 44(3(a) should be determined at the priority date (as
assumed by Kenny J in McCormick & Co v McCormick [2000] FCA 1335; 51 IPR 102 at 111)
but not s 44(3)(b).
- Hills
asserted that there is no decision in Australia or England in which a court has
exercised a discretion to allow registration
of a trade mark which has not been
used prior to the application date.
- Hills
also took issue with Bitek’s evidential claim that it has accrued
substantial goodwill in respect of the DIGITEK mark.
Hills argued that the
claimed substantial goodwill and value which is said to have attached to the
DIGITEK brand was inconsistent
with Bitek’s contention that its goods are
not sold by brand. I have already made reference to that submission and
evidence.
Bitek had on the s 44(1) argument sought to distinguish its TV
installation accessories from Hills’ brown goods on the basis
that
consumers of its goods are unlikely to be concerned with brands relying upon the
evidence of Mr Bialecki, Mr Manicastri, Mr
Rauter, Mr Kaczmarcyzk and Mr
Horwood.
- Hills
denied that it or the company had consented to the registration of the DIGITEK
mark. The evidence of Mr Cormick was that Bitek’s
purported registration
of DIGITEK was no more than an irritant or annoyance provided that the
registration excluded set-top boxes.
Hills asserted that it was clear from the
present proceedings that it remained opposed to the registration of
Bitek’s mark.
Hills, however, did not deny that the attitude of the
registered owner of the mark could be a relevant circumstance for the purposes
of s 44(3)(b).
- However
Hills submitted that Mr Cormick’s evidence should be read in light of the
commercial circumstances which existed at
the time the declaration was made. The
company was almost exclusively selling digital set-top boxes at that time and
therefore Mr
Cormick’s only concern was with set-top boxes.
- As
I have mentioned, Hills claimed that the “other circumstances”
referred to in s 44(3)(b) must be circumstances that
existed as at the
priority date. I think that is probably so, although there is something in the
argument put by Bitek that the
circumstances should not be confined to those
prior to the priority date because s 44(3)(b) does not in terms say so. I
think however,
on balance, that s 44 in general assumes an inquiry as at
the priority date and as was said in Southern Cross Refrigerating Co v
Toowoomba Foundry Pty Ltd 91 CLR 592 at 595, “the rights of the
parties are to be determined as at the date of the application”.
- For
that reason, I would confine the question of the exercise of the discretion
under s 44(3)(b) to those circumstances which prevailed
prior to the
priority date. If that is right, then if the occasion had arisen and I had
ruled against Bitek on Hills’ opposition
under s 44(1) there is no
evidence which would have moved the Court to exercise its discretion in favour
of Bitek.
- In
case however I am wrong about my holding that “other circumstances”
do not include circumstances which have occurred
after the priority date, I
should address the question of the exercise of the discretion under
s 44(3)(b) having regard to the matters
advanced by Bitek.
- It
is right, as Bitek contends, that Mr Cormick did say that the registration of
DIGITEK was no more than an irritant or an annoyance
provided that the
registration excluded set-top boxes. That is a relevant matter to have regard
to if, as I say, circumstances subsequent
to the priority date are relevant at
all. Hills conceded that that evidence would be relevant in those circumstances
but argued
that his evidence should be read in the light of the circumstances
then prevailing and, in particular, the fact the company was then
only selling
set-top boxes. In my opinion, some weight can be put on what Mr Cormick said at
the time but that comment made so long
ago should not determine how the Court
should exercise its discretion in relation to this issue.
- However,
I would not have exercised my discretion in favour of Bitek under
s 44(3)(b) even if events after the priority date were
relevant for two
reasons. First, because Bitek had not used the mark prior to the priority date.
It did not make any sales under
the brand. Secondly, its case was that its
goods are not sold by reference to its mark. As Hills contended, Bitek’s
case
was that the consumers of its goods are unlikely to be concerned with
brands because brands are unimportant with TV installation
accessories.
- If
that is so, then it seems to me that little goodwill could have attached to the
brand or the mark since it has been used and in
those circumstances where there
is a finding under s 44(1), there would be insufficient evidence to support
the exercise of discretion
in favour of the applicant for registration. If
Bitek is right that its consumers do not depend upon brand or mark, then little
would be lost to Bitek in arranging for a mark which is not deceptively similar
to the Hills’ mark.
- Hills
also objected to registration under s 60 and s 42 and those objections
must now be addressed.
- At
the relevant time (4 July 2003), s 60
provided:
The registration of a trade mark in respect of particular goods or services may
be opposed on the ground that:
(a) it is substantially identical with, or deceptively similar to, a trade mark
that, before the priority date for the registration
of the first-mentioned trade
mark in respect of those goods or services, had acquired a reputation in
Australia; and
(b) because of the reputation of that other trade mark, the use of the
first-mentioned trade mark would be likely to deceive or cause
confusion.
Note 1: For deceptively similar see section 10.
Note 2: For priority date see section
12.
- Section 60
of the Act requires a party opposing registration to
establish:
(a) the mark sought to be registered is substantially
identical or deceptively similar mark to an existing registered mark; and
(b) the existing mark had acquired a reputation in Australia; and
(c) because of that reputation the use of the mark sought to be registered
would be likely to deceive or cause confusion.
- Section
60 first requires a finding that the two marks are substantially identical or
deceptively similar. Without that finding,
no consideration needs to be given
to whether or not the registered mark had acquired a reputation in Australia.
Without that finding
s 60(b) need not be addressed.
- Both
parties relied on their submissions made under s 44(1) in relation to whether
the two marks were deceptively similar. For the
reasons which I have given, I
am of the opinion that the two marks are deceptively similar. No more needs to
be said about this
element of s 60.
- The
evidence put forward to substantiate Hills’ claim that the DGTEC brand had
acquired a reputation in Australia by 4 July
2003 related to the sales and
promotion of DGTEC set-top boxes. Mr Cormick’s evidence was that from
August 2001 to June 2003
the sales revenue for this DGTEC product was
approximately $20.3 million from 33,377 units sold and the company’s
advertising
expenditure was $395,500. Hills argued that its set-top box was the
only product of its kind in Australia at the relevant time because
it was the
only set-top box capable of receiving high definition signal. As the product
was unique, the product was sold and promoted
by 375 retailers including 15
national retail chains from September/October 2001. Hills argued the degree of
market exposure and
promotion “easily establishes” that DGTEC was
well known in Australia as at July 2003.
- Hills
also argued that the sales and advertising expenditure for the DGTEC trade mark
was evidence that DGTEC had acquired a reputation
in Australia.
- Hills
argued that the mark’s reputation can be inferred from a high volume of
sales, together with substantial advertising
expenditures and other promotions:
McCormick & Co v McCormick [2000] FCA 1335; 51 IPR 102 at [86]. It claimed that its
expenditure in respect of the DGTEC mark was comparable to or greatly exceeded
the expenditure which had been
considered sufficient to establish reputation in
previous cases.
- Bitek
did not dispute that the set-top box was a unique product, or Hills’
evidence concerning its sales and advertising expenditure.
- Bitek’s
argument was that DGTEC had not acquired a reputation in Australia by July 2003
for two reasons. First, prior to July
2003, the only evidence of significant
sales of DGTEC branded products concerned set-top boxes. The company had not
engaged in brand
extension or line extension into other goods as at the priority
date. Secondly, the sales figures in respect of the set-top boxes
during the
relevant period are not sufficient to justify a finding that DGTEC had acquired
a reputation in Australia.
- The
reputation must attach to the mark not the goods: s 60(a). The reputation
must have been acquired in Australia. The opponent
must prove that the
mark’s reputation is such that another mark would be likely to deceive or
cause confusion.
- Whilst
proof of sales and advertising is not irrelevant to prove reputation, that
evidence cannot be determinative. I do not understand
Kenny J to be saying
otherwise in McCormick & Co v McCormick [2000] FCA 1335; 51 IPR 102.
- The
evidence by itself does not prove any reputation at all. It may tend to prove
that the goods sold under the mark are very marketable
goods. In this case the
goods being marketed under the DGTEC mark were set-top boxes which having regard
to changes in the industry
were marketable to persons who wanted to upgrade
their analogue equipment.
- I
do not think the bald evidence supports a finding of a reputation in the
mark.
- In
my opinion, the Hills’ mark had not acquired a reputation in Australia of
the kind that is contemplated in s 60. The mark
had only been used on
set-top boxes prior to the priority date and although Hills, and previously the
company, had sold in excess
of $20 million worth of set-top boxes, there is no
evidence that the mark under which the set-top boxes had been sold had a
reputation
of the kind contemplated in this section.
- For
that reason alone, I would have dismissed Hills’ objection under
s 60.
- If
Hills were able to establish that the marks are substantially identical or
deceptively similar and that its mark had acquired
a reputation in Australia,
Hills would need to establish that the use of the Bitek mark would be likely to
deceive or cause confusion.
Hills argued that if it made out the threshold test
in s 60(a) it would “often follow” that the use of the mark
would
be likely to deceive or cause confusion.
- Although
it is not necessary to consider whether if Hills’ trade mark had acquired
a reputation the use of Bitek’s trade
mark would be likely to deceive or
cause confusion because, as I have found, Hills’ trade mark had not
acquired such a reputation,
in case the matter has to be considered again, I
will say something briefly in relation to this aspect.
- Hills’
argument rather assumes that if a party can make out a reputation then it
follows that the use of the mark would be
likely to deceive or cause confusion.
That cannot be right because if that were the case there would be no point in
the further
words in the section.
- The
inquiry under s 60 must be a staged inquiry. First, there must be a
finding that the mark is substantially identical with or
deceptively similar to
an existing registered mark. Secondly, the opponent must establish that its
trade mark had before the priority
date for the registration of the other
party’s trade mark acquired a reputation. Thirdly, it must establish,
because of that
reputation, the use of the trade mark which is sought to be
registered would be likely to deceive or cause confusion. Hills’
argument
conflates the last two inquiries and for that reason must be rejected.
- Bitek
advanced four submissions to support its contention that the trade mark,
DIGITEK, was not likely to deceive consumers or cause
confusion.
- First,
the products marketed under the brands DGTEC and DIGITEK are fundamentally
different in that they serve different purposes
and functions. The DIGITEK brand
relates to certain products which Hills does not, and did not, manufacture, such
as television installation
accessories. Bitek submitted that the notional
customer would be aware that the manufacturers of televisions and other
“brown
goods” (including set-top boxes) do not also manufacture
television installation accessories. Further, the notional customer
would have
only associated DGTEC with set-top boxes, as that was the only product it had
sold in significant quantities at that time.
- Secondly,
if sold in major electronic retail stores, DIGITEK’s products are likely
to be displayed separately from DGTEC’s
products. TV installation
accessories are sold in blister packaging and hang from walls in stores, whereas
digital set-top boxes
are displayed with televisions in different parts of the
store. Further, TV installation accessories are not sold in conjunction
with
set-top boxes.
- Thirdly,
there is a difference in price of DGTEC’s set-top boxes (around $600-$700)
compared to DIGITEK branded TV installation
accessories (ranging from $1 for
cabling to $250 for webcam).
- Fourthly,
the notional customer is not concerned with brand names in respect of TV
installation accessories. Rather the customer’s
concern is likely to
relate to functionality and price. Alternatively, brand name is more important
when it comes to televisions,
DVD players and similar brown goods.
- Assuming,
contrary to my opinion, that the Hills’ mark had acquired a reputation, it
had only acquired, at the priority date,
a reputation in respect of set-top
boxes. Hills did not contend for any other reputation. If that was the case,
the use of the
Bitek mark in respect of its goods was not likely to deceive or
cause confusion because the goods were unrelated to a set-top box.
Bitek’s goods specifically excluded set-top boxes. A consumer wishing to
acquire a TV installation accessory or external
antenna bearing the Bitek brand
would not in my opinion be likely to be confused or deceived as to the origin or
provenance of those
products because of Hills’ mark’s reputation in
set-top boxes. For that further reason, Hills could not rely upon s
60 to
defeat Bitek’s application for registration.
- However
for the reasons I have already given, because Hills’ mark had not acquired
a reputation, in my opinion the opposition
under s 60 has to be
dismissed.
- It
follows from that conclusion that I need not deal with the next argument
advanced by Bitek but again I shall do so for
completeness.
Application of s 44(3) to s 60
- Bitek
submitted that even if the Court were satisfied that Hills had established the
requisite elements of s 60, the Court retained
a discretion to register the
DIGITEK mark under s 44(3) and, as I understand the argument, both
paragraphs of that subsection.
- Hills
submitted that s 44(3) does not apply to s 60: McCormick & Co v
McCormick [2000] FCA 1335; 51 IPR 102. In McCormick & Co v McCormick [2000] FCA 1335; 51 IPR 102
Kenny J held that s 60 is not subject to s 44(3) and there is no
honest concurrent user exception to s 60.
- In
my opinion, s 44(3) has no application to an opposition under s 60.
Section 44(1) states that it is subject to subsections (3)
and (4) so providing
an interlocking regime in relation to s 44 as a whole. Section 60 does not
provide that it is subject to s
44(3).
- The
inquiry which is carried out under s 44 is in relation to whether the
applicant for registration is seeking to register a trade
mark which is
deceptively similar to a registered trade mark in respect of similar goods or
goods of the same description. If that
inquiry is determined adversely to the
applicant for registration, then s 44(3) may be engaged and will be engaged
if there has been
an honest concurrent use of the two trade marks or because of
other circumstances it is proper to exercise a discretion in favour
of the
applicant for registration.
- The
inquiry under s 44(1) is limited to whether the mark sought to be
registered is substantially identical with or deceptively similar
to a mark
registered in respect of similar goods. An opponent does not have to positively
prove that registration will lead to deception
or cause confusion. The opponent
does not have to establish the extent of use of the mark. It is enough to
establish that the marks
are substantially identical or deceptively similar and
they both relate to similar goods.
- The
inquiry under s 60 is whether the already registered trade mark has
acquired a reputation and because of that reputation the
use of a trade mark
which is sought to be registered would be likely to deceive or cause confusion.
The inquiry in respect of s
60 is in relation to reputation, which is a
different inquiry to that under s 44(1). The inquiry is also wider in that
it goes into
whether the registration will lead to actual deception or cause
confusion. Because they are different inquiries, in my opinion s
44(3) has
no application in the event that an opposition under s 60 has been made
out. I agree with the reasons of Kenny J in McCormick & Co v
McCormick [2000] FCA 1335; 51 IPR 102.
- Hills’
third ground in opposition to the Bitek application relied upon s 42(b) of
the Act. That paragraph provides:
42. An application for the registration of a trade mark must be rejected
if:
...
(b) its use would be contrary to law.
- For
this ground, Hills simply maintained that Bitek’s use of the DIGITEK mark
in relation to Bitek’s application goods
would be and is contrary to law
because it would amount to an infringement of the DGTEC trade mark registration
and a breach of s
52 and/or s 53 of the TPA.
- Hills’
counsel conceded in opening that its opposition under s 42(b) was
contingent on its establishing its case under either
s 44(1) or s 60.
If it could not mount a successful opposition under s 44(1) or s 60 it
could not establish that Bitek’s use
of the mark would be contrary to
law.
- Bitek
argued that it was not sufficient for Hills to establish that the use of the
DIGITEK mark might amount to a contravention of
the law, but that Hills needed
to establish that the use was contrary to law: Red Hat Inc v Martinek
(2002) 56 IPR 292 at 299.
- Bitek
submitted it had no case to answer in respect of the allegations it engaged in
misleading and deceptive conduct contrary to
s 52 of the TPA. It asserted
there is no evidence which supports the prospect that Bitek has or will engage
in any conduct in any
relevant market that would lead people to mistakenly
believe there is a connection with Hills. The date at which Bitek’s
conduct
is to be judged is the date of first use, January 2004: Playcorp
Group of Companies Pty Ltd v Peter Bodum [2010] FCA 23; (2010) 84 IPR 542.
- Because
of the concession made by Hills, it seems to me that this aspect of Hills’
case does not need to be decided. Hills
has not succeeded under s 44(1) or
s 60 of the Act so, in those circumstances, s 42(b) does not need to
be addressed. If I am wrong
about my conclusion that Hills’ opposition
under s 44(1) or s 60 should fail, then Hills does not need to avail
itself of s
42. Either way Hills’ reliance on s 42 is
misconceived.
- Hills
did not rely upon s 43 of the Act, notwithstanding it was a ground of
appeal. Bitek addressed this matter but as Hills eschewed
any reliance upon
s 43, those submissions need not be addressed.
- Hills
also did not press the ground of appeal identified in paragraph (d) in [37] of
these reasons that Bitek was not the owner of
the Bitek trade mark: s 58.
Again, Bitek addressed that ground but, because Hills did not rely upon it, no
more needs to be said
about that ground.
CONCLUSION
- The
delegate made a direction that the Bitek mark be registered one month after her
decision. However, she also directed that the
registration not occur if the
Registrar was served with a notice of appeal within that time. That occurred so
the direction for
registration has never taken effect although the direction
still stands. She further ordered that “the registration shall
not occur
until the appeal has been discontinued or, in the event of a decision from the
Court, that the application be subject to
its orders”.
- I
think the delegate has, in the event that this Court was asked to make a
decision on the appeal, left it to this Court to make
the order directing
registration.
- The
appeal should be allowed and the trade mark application 960495 should be
registered.
NON-USE PROCEEDING
- The
DGTEC trade mark registration for the series of word marks “DGTEC; DGTEK;
DGTECH” has been registered with effect
since 23 January 2002 in Class 9
and in respect of:
Digital and electronic products including
televisions, video players, DVD players, CD players, decoders and
cameras.
- As
has already been observed, the DGTEC trade mark registration was registered
under the now repealed s 51(1)(d) in respect of the
words “DGTEC;
DGTEK; DGTECH” on the basis that the words differ only in respect of
matters that are not inherently adapted
to distinguish the goods and do not
substantially affect the identity of the trade marks.
- Hills
contended and Bitek did not dispute that the words DGTEC, DGTEK and DGTECH are
each substantially identical to each other.
- On
2 May 2008 Bitek applied to the Registrar of Trade Marks under s 92(1) of
the Act for the removal of the DGTEC series marks from
the Register. Bitek
specified in its non-use removal application that the application was made under
the grounds specified in s
92(4)(a) and (b) of the Act, and sought removal
of the DGTEC trade mark registration for “all the goods/services for which
the trade mark is/may be registered”.
- On
22 May 2008 the Registrar advertised the non-use removal application in the
official journal. By operation of s 96 of the Act
and reg 9.3 of the
Trade Mark Regulations 1995 (Cth) (the Regulations), any notice of
opposition to the non-use removal application was due by 22 August 2008.
- On
20 August 2008, within the time required by the Regulations, Hills lodged with
the Registrar of Trade Marks a notice of opposition
to the non-use removal
application citing as the grounds for
opposition:
(a) The Trade Mark has been used by the registered proprietor in respect of the
goods for which the mark is registered, within the
period of three years ending
one month before the day on which the non-use application was
filed.
(b) If as alleged by the applicant for removal, there has been no use of the
Trade Mark within the period alleged, any failure to
use was due solely to
circumstances that were an obstacle to the use of the Trade Mark and was not due
to an intention to abandon
the Trade Mark or to an intention not to use it in
relation to the goods for which the Trade Mark is
registered.
(c) The discretion of the Registrar should be exercised in favour of the
registered proprietor by virtue of the circumstances surrounding
the use and
registration of the Trade Mark.
- Section
92(1) empowers a person to apply to the Registrar to have a trade mark removed
from the Register. Subsections (2) and (3)
are machinery subsections and do not
need to be repeated.
- Section
92(4) provides:
(4) An application under subsection (1) or (3) (“non-use
application”) may be made on either or both of the following
grounds, and
on no other grounds:
(a) that, on the day on which the application for the registration of the trade
mark was filed, the applicant for registration had
no intention in good
faith:
(i) to use the trade mark in Australia;
or
(ii) to authorise the use of the trade mark in Australia;
or
(iii) to assign the trade mark to a body corporate for use by the body corporate
in Australia:
in relation to the goods and/or services to which the non-use application
relates and that the registered
owner:
(iv) has not used the trade mark in Australia;
or
(v) has not used the trade mark in good faith in
Australia;
in relation to those goods and/or services at any time before the period of one
month ending on the day on which the non-use application
is
filed;
(b) that the trade mark has remained registered for a continuous period of 3
years ending one month before the day on which the non-use
application is filed,
and, at no time during that period, the person who was then the registered
owner:
(i) used the trade mark in Australia;
or
(ii) used the trade mark in good faith in
Australia;
in relation to the goods and/or services to which the application
relates.
Note 1: For file and month see section 6.
Note 2: If non-use of a trade mark has been established in a particular place or
export market, then instead of the trade mark being
removed from the Register,
conditions or limitations may be imposed under section 102 on the registration
of the trade mark so that
its registration does not extend to that place or
export market.
- On
18 December 2008 the non-use application was referred to the Court by the
Registrar pursuant to s 94 of the Act. The Registrar’s
Reference of
Application specified that the application was that the registration “be
removed from the register in respect
of all the goods in respect of which it is
registered”. Once referred, this Court can determine the matter as if the
application
had been made to it: s 92(3) of the Act.
- Hills
submitted as a preliminary matter that the Full Federal Court in E & J
Gallo Winery v Lion Nathan (Australia) Pty Ltd [2009] FCAFC 27; 175 FCR 386 had decided that
the removal of a trade mark registration under s 92 or s 101 cannot
operate retrospectively and only operate prospectively
from the date of the
Court’s order. Hills argued that the removal of the registration under
s 92 and s 101 of the Act would
provide no defence to infringement or
in relation to any conduct prior to any order made by the Court to remove part
or all of the
registration.
- Whilst
the application was said to be made under s 92(4)(a) and (b), Bitek relied
solely on s 92(4)(b) for the non-use application
probably because if an
application did not succeed in respect of each of the relevant goods under
s 92(4)(b), then it would also
fail under s 92(4)(a).
- On
an application of this kind the onus is upon the opponent, that is to say,
Hills, to answer the application for the removal.
Section 100 deals with the
question of onus.
- Section
100 of the Act provides:
100 (1) In any proceedings relating to an opposed application, it is
for the opponent to rebut:
(a) any allegation made under paragraph 92(4)(a) that, on the day on which the
application for the registration of the trade mark
was filed, the applicant for
registration had no intention in good
faith:
(i) to use the trade mark in Australia;
or
(ii) to authorise the use of the trade mark in Australia;
or
(iii) to assign the trade mark to a body corporate for use by the body corporate
in Australia;
in relation to the goods and/or services to which the opposed application
relates (“relevant goods and/or services”);
or
(b) any allegation made under paragraph 92(4)(a) that the trade mark has not, at
any time before the period of one month ending on
the day on which the opposed
application was filed, been used, or been used in good faith, by its registered
owner in relation to
the relevant goods and/or services;
or
(c) any allegation made under paragraph 92(4)(b) that the trade mark has not, at
any time during the period of 3 years ending one
month before the day on which
the opposed application was filed, been used, or been used in good faith, by its
registered owner in
relation to the relevant goods and/or
services.
Note 1: If the registered owner of the trade mark has authorised another person
to use it, any authorised use of the trade mark by
that person is taken to be a
use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For file, month and registered owner see section
6.
(2) For the purposes of paragraph 1(b), the opponent is taken to have rebutted
the allegation that the trade mark has not, at any
time before the period
referred to in that paragraph, been used, or been used in good faith, by its
registered owner in relation
to the relevant goods and/or services
if:
(a) the opponent has established that the trade mark or the trade mark with
additions or alterations not substantially affecting
its identity, was used in
good faith by its registered owner in relation to those goods or services before
that period; or
(b) in a case where the trade mark has been assigned but a record of the
assignment has not been entered in the
Register:
(i) the opponent has established that the trade mark, or the trade mark with
additions or alterations not substantially affecting
its identity, was used in
good faith by the assignee in relation to those goods or services before that
period and that that use
was in accordance with the terms of the assignment;
and
(ii) the Registrar or the court is of the opinion that it is reasonable, having
regard to all the circumstances of the case, to treat
the use of the trade mark
by the assignee before that period as having been a use of the trade mark in
relation to those goods or
services by the registered
owner.
Note 1: If the registered owner of the trade mark has authorised another person
to use it, any authorised use of the trade mark by
that person is taken to be a
use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
(3) For the purposes of paragraph 1(c), the opponent is taken to have rebutted
the allegation that the trade mark has not, at any
time during the period
referred to in that paragraph, been used, or been used in good faith, by its
registered owner in relation
to the relevant goods and/or services
if:
(a) the opponent has established that the trade mark, or the trade mark with
additions or alterations not substantially affecting
its identity, was used in
good faith by its registered owner in relation to those goods or services during
that period; or
(b) in a case where the trade mark has been assigned but a record of the
assignment has not been entered in the
Register:
(i) the opponent has established that the trade mark, or the trade mark with
additions or alterations not substantially affecting
its identity, was used in
good faith by the assignee of the trade mark in relation to those goods or
services during that period
and that that use was in accordance with the terms
of the assignment; and
(ii) the Registrar or the court is of the opinion that it is reasonable, having
regard to all the circumstances of the case, to treat
the use of the trade mark
by the assignee during that period as having been a use of the trade mark in
relation to those goods or
services by the registered owner;
or
(c) the opponent has established that the trade mark was not used by its
registered owner in relation to those goods and/or services
during that period
because of circumstances (whether affecting traders generally or only the
registered owner of the trade mark)
that were an obstacle to the use of the
trade mark during that period.
Note 1: If the registered owner of the trade mark has authorised another person
to use it, any authorised use of the trade mark by
that person is taken to be a
use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
- Bitek
argued that there was no evidence of any use by the company or Hills of the
DGTEK and DGTECH marks at any time after the application
for those marks was
filed on 23 January 2002. In particular it argued that there was no
evidence of any use by the company or by
Hills during the relevant period. For
those reasons alone, it was contended the registrations for DGTEK and DGTECH
should be removed
entirely from the Register.
- Hills
argued that it is sufficient for ss 100(2)(b)(i) and 100(3)(b)(i) for the
owner of the trade mark to establish use of the trade
mark “with additions
or alterations not substantially affected its identity”. Because the
series of words “DGTEC;
DGTEK; DGTECH” was registered under
s 51(1)(d) of the Act on the basis that the difference between them do not
substantially
affect their identity and Bitek did not challenge that aspect on
registration, it is sufficient, Hills argued, under ss 100(2)(b)(i)
or
100(3)(b)(i) to establish use of DGTEC to rebut the allegation of non-use of
each of DGTEC, DGTEK and DGTECH. Bitek took issue
with that contention.
- Bitek
argued that the evidence was such that notwithstanding the specific items
identified in the statement of goods in Class 9 including
a residual catch all
description “digital and electronic products”, the evidence would
only support the use of the DGTEC
mark in relation to a limited number of
specific goods. Bitek argued that in those circumstances the DGTEC registration
ought to
be limited to those particular goods for which there was evidence of
use in the relevant period. In that regard, Bitek relied upon
George Weston
Foods Ltd v Manildra Flour Mills Pty Ltd (1999) 47 IPR 145 at 151. It
argued that Hills’ statement of goods ought to be limited in Class 9
to:
Set-top boxes, digital video recorders with hard drive, LCD televisions, CD and
MP3 players, DVD players, micro-stereo sound systems,
iPod docking speakers and
web-based cameras.
- It
argued that the evidence would not support the DGTEC mark for “digital and
electronic products”.
- Hills
on the other hand argued that the specification provides a statement of goods
which includes “digital and electronic
products” and then
particularises that general description by reference to “televisions,
video players, DVD players,
CD players, decoders and cameras”. It argued
that the specification of the statement of goods should be read with due
recognition
that the types of goods falling within that inclusive specification
may well expand or vary as technology develops. It relied upon
a decision of
Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; (2009) 176
FCR 300 which, in turn, relied upon Magnavox (Aust) Pty Ltd’s Trade
Mark (1964) 34 AOJP 2075 at 2078. It also relied upon a statement of the
delegate who determined the opposition presently under
appeal:
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.
- It
further argued that the company and Hills had used the DGTEC mark in respect of
digital and electronic products in the relevant
period, including for
televisions, video players, CD players, decoders and cameras and relied upon the
evidence of its witnesses,
in particular Mr Cormick.
- Hills
argued that Bitek could not be entitled to the relief it sought confining the
current statement of goods in the manner contended
for by Bitek. Whilst Hills
accepted that once an application for removal is filed which meets the formal
requirements of s 92(2)
of the Act and the Regulations, the onus shifts to
the trade mark owner to rebut the allegation of non-use, it argued that, in
those
circumstances, fairness dictates that any application for removal needed
to clearly identify the factual matters which the trade
mark owner needed to
rebut in order to save the mark. It argued that it would not be appropriate
that the trade mark owner had to
guess what allegation it needed to rebut.
- Hills
said that the practice was, in applications under s 92 of the Act, to
specify clearly which goods or services are the subject
of the non-use
application. It said that it was unaware of any decision whereby specific goods
were removed or excluded from a trade
mark registration under s 92 of the
Act without first being particularised by the applicant for removal. It relied
on a series of
decisions which indicated that the practice was that the
application for removal should particularise the goods which were to be
removed
from the trade mark registration: McHatten v Australian Specialised Vehicle
Systems Pty Ltd (1996) 34 IPR 537; Woolly Bull Enterprises Pty Ltd v
Reynolds [2001] FCA 261; (2001) 107 FCR 166; Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131; and
Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300.
- Hills
argued that in McHatten v Australian Specialised Vehicle Systems Pty Ltd
34 IPR 537, Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 and Pioneer
Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300 the application
particularised the goods which the applicants sought to have removed or excluded
from the relevant registration which
properly allowed each of the owners of the
registered mark to rebut the allegation of non-use. On the other hand, in
Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; 107 FCR 166, the removal
application applied to all goods in the relevant registration and the matter was
determined by reference to the use
in relation to any of the goods. Hills
contended that, in the absence of any particularisation by Bitek of specific
goods, the Court
should not allow Bitek at trial to specify certain goods for
removal or exclusion.
- Lastly,
Hills relied upon the discretion given the Registrar in s 101(3) of the
Act.
- Section
101(3) provides a general discretion:
(3) If satisfied that it is reasonable to do so, the Registrar or the Court may
decide that the trade marks should not be removed
from the Register even if the
grounds on which the application was made have been
established.
- Bitek
argued that there were no special facts or circumstances which would warrant the
exercise of the discretion in favour of Hills.
- I
shall first address Hills’ preliminary point that the decision of E
& J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2009] FCAFC 27; 175 FCR 386 means
that even if the trade marks registration was ordered to be removed the order
would not operate retrospectively and only operate
prospectively from the date
of a Court’s order. In that case, the Court was concerned with a
cross-appeal which raised for
consideration the effective date of removal of the
registration of a trade mark. The Court considered s 101(2) which provides
that
the Court may order the Registrar 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.
- The
Court said at [65]-[66]:
From this point in the statutory scheme when the Court comes to make the order,
the effect of the order is, in substance, determined
by the TM Act itself. That
is because the task the Registrar must perform is, as expressly identified in
s 101(2), to “remove
the trade mark from the Register”. The
expression “remove from the Register” (an expression in the active
voice)
is defined in s 6 and that definition draws attention to s 13.
While that latter section, in terms, is in the passive voice and
identifies the
circumstances in which a trade mark is taken to have been removed from the
Register, it nonetheless makes plain that
the Registrar is obliged to make an
entry in the Register to the effect that all entries in the Register relating to
the trade mark
are taken to have been removed from the Register. Accordingly,
once the removal order is made by the Court, it must be complied
with in the way
prescribed by the TM Act. It is, in our opinion, a false issue to contemplate
whether or not an order under s 101(2)
can be made as a
“retrospective” order. The TM Act does not authorise the Court to
make an order requiring the Registrar
to do anything other than what the TM Act
itself prescribes.
It is, of course, an entirely different question as to what is the effect of the
act of the Registrar when complying with the order.
Does the act of making the
entry into the Register have a legal effect on events which occurred before the
entry was made? It is
tolerably clear from s 127 that, apart from the
effect of that section, it does not. The section proceeds on the basis that
even
if a ground for removal is made out and, by implication as at least one
possibility, a removal order has been made, there nonetheless
can be
infringement of the trade mark whilst ever it is registered and before the entry
is made.
- The
decision is binding on me. I must proceed upon the basis that a party may
infringe another party’s mark even if the mark
is subsequently
deregistered. That being the case, it follows that if I were of the opinion
that Hills’ marks ought to be
removed from the Register under either
s 92 or s 101 of the Act that would not provide Bitek with any defence
to the infringement
proceeding for any conduct prior to the Court’s order.
The same would apply if I ordered that the statement of goods for the
Hills’ mark be limited in the manner contended for by Bitek.
- Insofar
as the non-use removal application is brought under s 92(4)(b) of the Act,
the relevant three year period for the ascertainment
of Hills’ use of its
trade mark is 1 April 2005 to 1 April 2008.
- It
is for Hills on this application to establish that it has used the registered
trade mark: s 100. Hills accepted that onus arguing
that: “a single
bona fide use of the mark in the relevant period is sufficient to answer an
application for removal under both
provisions”: Woolly Bull Enterprises
Pty Ltd v Reynolds [2001] FCA 261; 107 FCR 166 at 172.
- Hills
argued that because the series of words DGTEC; DGTEK; DGTECH were registered
under s 51(1)(d) of the Act on the basis that
the differences between them
do not substantially affect their identity and because Bitek has not challenged
that aspect of the registration,
Hills need only establish the use of the mark
DGTEC to rebut the allegation of non-use of the series of marks. I accept that
argument.
Because the three marks were registered as a series of marks it is
enough for Hills to establish that one of the marks has been
used in the
relevant period.
- The
specification of the goods in the DGTEC trade mark is, as mentioned in [8]
above, “digital and electronic products including
televisions, video
players, DVD players, CD players, decoders and cameras”.
- Hills
argued that the specification “digital and electronic products”
should be read disjunctively and the remaining
specification read by reference
to the digital and electronic products which are included in the broad
description.
- Usually
the word “and” is read conjunctively to the words to which it
applies whilst the word “or” is usually
read disjunctively.
However, it is not always the case and sometimes the word “and” is
used disjunctively or, to put
it another way, it has a dispersive effect.
However, in my opinion these words are to be read conjunctively. If they were
to be
read disjunctively the class of goods to which they would refer would be
extremely wide. I think also the fact that the words are
followed by the word
“includes” and then a description of goods means also that the word
“and” is conjunctive.
- The
next question is whether the words which follow “digital and electronic
products” are meant to define precisely the
extent of the digital and
electronic products or whether they are examples of digital and electronic
products and the words are not
meant to be exhaustive of the types of digital
and electronic products which are described in the statement of goods.
- The
delegate from whose decision the appeal proceeding was brought
said:
Registration 90-1020 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.
- I
agree with the delegate. In my opinion, the words which follow the words
“digital and electronic products” are not
exhaustive of the goods to
which the mark refers but they provide examples of the type of digital and
electronic products for which
the mark is registered. In ordinary construction,
the use of the word “means” in the definition is used where it is
intended to make the words which follow exhaustive of the item defined, whilst
the use of the word “includes” is used
if it is intended that the
words following would enlarge the ordinary meaning of the word being
defined.
- In
this case the opening words “digital and electronic” are very wide
in their application. The reference to the goods
which follow is a reference to
the type of goods which are the subject of the mark. The goods particularly
described in the description
are the types of digital and electronic goods to
which the mark applies. They cannot be said to be necessarily all of the goods
to which the mark applies because of the use of the word “includes”.
Although in these proceedings it is not necessary
to consider the full extent of
the goods which are being described, they will be goods of a like kind to the
digital and electronic
goods defined after the word “includes”.
- Mr
Griggs gave evidence of the difference between digital and electronic products
which was not the subject of any cross-examination
by Mr Caine. Mr Griggs said
that the term “digital products” refers to products which operate on
a digital rather than
an analogue information storage or processing system and
“electronic products” refers to products consisting of a network
of
connected capacitators, resistors and doctors and other electronic devices.
There being no dispute about that aspect of Mr Griggs’
evidence, I accept
that evidence subject to one matter which I shall later refer.
- Hills
led evidence of its use of the DGTEC trade mark in respect of each of the
digital and electronic products specified in the
class 9 goods description. The
evidence of use related only to the period 1 April 2005 to 1 April 2008 and was
given by Mr Cormick.
Televisions
- Mr
Cormick’s evidence was that Hills (and until November 2007 the company)
has used the trade mark DGTEC in respect of televisions
continuously since 2004.
Hills sought to establish continual use by reference to advertisements of DGTEC
television products on the
company’s website (www.dgtec.com.au) in 2007;
DGTEC television products advertised for sale in a JB Hi Fi catalogue issued
in
July 2007; letters sent by the company in June 2007 to electronic product
retailers (WOW Sight & Sound and Retravision) offering
DGTEC television
products for sale; emails referring to the supply of DGTEC television products
by the company to Retravision; the
Hills’ sales database for the period
November 2007 to March 2008 indicating the sale of a quantity of a DGTEC
television products;
and the promotion of DGTEC products at the Harvey Norman
Melbourne Conference from 7-14 May 2007.
DVD players
- Mr
Cormick’s evidence was that Hills (and until November 2007 the company)
has used the trade mark DGTEC in relation to DVD
players continuously since
2004, digital video recorders continuously since 2003 and combination units
involving DVD players continuously
since 2006.
- Hills
sought to establish continual use included sales and promotion of DGTEC DVD
player products from January 2008 and a set-top
box/DVD combination product from
2006 to November 2008; a DGTEC DVD player being advertised for sale in a JB Hi
Fi catalogue issued
in July 2007; letters sent by the company in June 2007 to
electronic product retailers (WOW Sight & Sound and Retravision) offering
for sale DGTEC DVD products; DGTEC DVD products being advertised for sale in
2007 on the company’s website (www.dgtech.com.au);
the company promoting
DGTEC DVD products at the Harvey Norman Melbourne Conference from 7-14 May
2007.
Video players
- Hills
asserted that DVD players are the same product as video players and therefore
relied on the evidence of use outlined above.
CD players
- Mr
Cormick’s evidence was that Hills (and until November 2007 the owner) used
the trade mark DGTEC in relation to audio products
including CD players
continuously since 2004 and audio speakers continuously since 2007.
- The
evidence of use included letters sent by the company in June 2007 to electronic
product retailers (WOW Sight & Sound and
Retravision) offering for sale
DGTEC branded CD player products; DGTEC branded Micro Hi Fi being advertised in
a JB Hi Fi catalogue
issued in July 2007; the company promoting DGTEC
combination TV/DVD/CD players at the Harvey Norman Melbourne
Conference.
Decoders
- The
evidence of use in relation to decoders related solely to set-top boxes. Mr
Giliotti and Mr Griggs gave evidence that set-top
boxes fall within the
description of a digital decoder. Mr Cormick’s evidence was that Hills
(and until November 2007 the
company) used the trade mark DGTEC in relation to
set-top boxes continuously since April 2001. The evidence put forward by Hills
was that set-top boxes were advertised for sale in 2007 on the company’s
website (www.dgtec.com.au).
Cameras
- Mr
Cormick’s evidence was that Hills (and until November 2007 the company)
has used the trade mark DGTEC in relation to web-based
cameras continuously
since 2007. The only evidence of use of the DGTEC trade mark in respect of
cameras consisted of letters sent
by the company in June 2007 to electronic
product retailers (WOW Sight & Sound and Retravision) offering for sale
DGTEC branded
camera products.
- Hills
also adduced evidence that the DGTEC brand was used in respect of remote
controls continuously since 2004 and recording devices
during 2007.
- As
I have said, Bitek’s application filed on 2 May 2008 to remove the trade
mark DGTEC from the Register for non-use concerned
the removal of “all of
the goods” in respect of which the trade mark is registered, not any
particular goods. However,
in its opening submissions, Bitek sought to alter
the scope of the application to goods other than:
set top boxes,
digital video recorders with hard drive, LCD televisions, CD and MP3 players,
DVD players, micro stereo systems, iPod
docking speakers and web-based
cameras.
- It
did so in circumstances where Bitek did not dispute or challenge the evidence of
use put forward by Hills. Bitek conceded that
its original application relating
to the removal of all goods was too broad. Bitek admitted that the evidence
established use of
the DGTEC mark during the relevant period (1 April 2003 to 1
April 2005). However it argued that because Hills’ use was limited
to a
number of specific goods, the DGTEC registration should be limited to those
particular goods for which there was evidence of
use in the relevant period.
That is, it sought to have the DGTEC trade mark registration removed only in
respect of goods for which
no evidence of use had been adduced.
- Because
Bitek was seeking to remove “all of the goods” for non-use, Hills
submitted that it was required to rebut the
allegation of non-use of all of
those goods. Hills argued that the evidence demonstrated use of the DGTEC
trade mark in respect
of several products including televisions, DVD players, CD
players, decoders and cameras. On this basis, it argued that the application
should be dismissed.
- In
the alternative, Hills argued that Bitek could not alter its position or limit
its application as an application for removal under
s 92(2) is required to
be in an approved form: reg 9.1 of the Regulations. The only application for
removal in approved form is
the initial application in which Bitek seeks to
remove “all of the goods” in respect of which the trade mark is
registered.
- Hills
also said that Bitek should not be allowed to limit its application because to
do so would lead to a denial of procedural fairness.
Hills argued that
Bitek’s “last minute” particularisation of the goods it seeks
to have removed from the Register
was “contrary to the established
procedure” of the Court. The Court’s procedure, Hills argued,
requires the goods
the subject of the application for removal to be
particularised so as to allow the registered proprietor of the trade mark to
prepare
its case to rebut the allegation of non-use. This it argued was
important because the registered proprietor bears the onus of rebutting
allegations of non-use under s 100(2) of the Act: McHattan v Australian
Specialised Vehicle Systems Pty Ltd 34 IPR 537, Woolly Bull Enterprises
Pty Ltd v Reynolds [2001] FCA 261; 51 IPR 149, Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131
and Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300. Those
cases show it was said by Hills that sufficient particularisation of the
allegations of non-use is central to an application
for removal.
- First,
I should deal with the evidence which is not challenged. I am satisfied that
the evidence establishes use of the DGTEC mark
during the relevant period in
respect to some of the goods for which the mark is registered. Hills has proved
use of the mark in
respect to set-top boxes, remote controls, recording devices,
namely personal video recorders and DVD recorders, televisions, DVD
players,
micro stereo sound systems, CD and MP3 players, iPod docking speakers, web-based
cameras and camcorders.
- I
should mention three products. Bitek’s “amended application”
does not refer to remote controls. Its “amended
application” refers
to LCD televisions and web-based cameras. I think a camcorder was assumed by
the parties to be a web-based
camera and no more needs to be said about that
product.
- I
am however satisfied that Hills has proved the use of remote controls and
televisions (including but not limited to LCD televisions).
I think therefore
that Bitek’s “amended application” would seek to impermissibly
narrow the class to exclude remote
controls and other televisions other than LCD
televisions.
- The
first question which arises is whether as Hills contended the findings of
Hills’ use of the DGTEC mark disposes of Bitek’s
application for
removal which, as filed, alleged non-use of all of the goods in respect of which
DGTEC is registered.
- Bitek
did not seek to amend its application for removal. Under s 66 of the Act
the Registrar or Court may, if requested, amend an
application for removal.
Section 66 provides:
The Registrar may, at the request of the person who has filed an application
(other than an application for the registration of a
trade mark), a notice or
other document for the purposes of this Act or at the request of the
person’s agent, amend the application,
notice or
document:
(a) to correct a clerical error or an obvious mistake;
or
(b) if the Registrar is of the opinion that it is fair and reasonable in all the
circumstances of the case to do so.
- The
Registrar may require that the request for amendment be reduced to writing if
the Registrar is of the opinion that the amendment
requested is not minor:
s 66A.
- Bitek’s
counsel confirmed that Bitek did not request to amend its original application
for removal:
MR HEEREY: Your Honour, can I just maybe clarify this before we all rise for
lunch? What we didn’t have notice of was that
my friend would come with
this – that he would amend his application in the way he has
- - -
MR CAINE: We are not amending.
- Hills
submitted that in those circumstances the Court was required to determine the
application as originally filed.
- Because
there has been no request by Bitek to amend the application pursuant to
s 66 of the Act I must first consider the application
for removal as filed
by Bitek on 2 May 2008 because in the absence of an order giving leave to amend
that is the application before
me. That application cannot succeed in its
entirety for the reasons already given.
- The
next question is whether because the application cannot succeed in its entirety
that means that is the end of the matter.
- The
Court has a discretion under s 101(2) to order the Registrar to remove
“any or all of the goods to which the application
relates” provided
it is satisfied that the grounds for removal have been established. The
relevant ground relied upon by Bitek
in its removal application is
s 92(4)(b).
- Bitek
submitted that it is permissible for the Court to rewrite the registration in
order to narrow its scope: George Weston Foods Ltd v Manildra Flour
Mills Pty Ltd 47 IPR 145 and New South Wales Dairy Corporation v Murray
Goulburn Co-Op Corporation 14 IPR 26 at 45.
- The
question is whether the Court may because of the provisions of s 101(2)
remove certain goods from a registration notwithstanding
that the application
seeks removal of “all of the goods”. In other words, does an
application for non-use fail because
the registered owner proved that the mark
has been used for some of the goods the subject of the mark without establishing
the use
of all of the goods?
- Hills’
argument that if the Court considered Bitek’s argument that the class of
goods should be narrowed would result
in a denial of procedural fairness should
be rejected. Bitek’s concession means that it cannot have the relief it
sought in
the application but in seeking to argue that it is entitled to have
the restricted relief it is thereby narrowing the scope of the
inquiry. In
those circumstances it could not be a denial of procedural fairness to allow the
matter to proceed by reference to a
narrower class of goods.
- I
also reject Hills’ submission that the application must fail because there
is evidence of use of some of its goods. I accept
Bitek’s argument that
the Court may exercise its discretion under s 101(2) to narrow the scope of
the registration where the
applicant establishes that a ground exists in
relation to only some of the goods to which the application relates.
- The
scope may be narrowed by excising goods from the specification: Murray
Goulburn Co-op Corporation v New South Wales Dairy Corporation (1990) 17 IPR
269 (“dairy products” amended to “flavoured milk and
cheese”); Mentholatum Co v Innoxa Marks Pty Ltd [2008] ATMO 61
(“sun block and sun screen preparations” expunged from the
registration) or by the Court redrafting the registration to ensure that
it accords with the scope of established use: George Weston Foods Ltd v
Manildra Flour Mills Pty Ltd 47 IPR 145 (“flour, semolina, wheaten
meal, and other products of cereals” altered to “noodle
flour”); Sanyo Chemicals Industries Ltd v Nuplex Industries (Australia)
Ltd [2005] ATMO 2 (“all goods in Class 1, including polyether polyols
and derivatives thereof, defoamers” limited to “surfactants”);
Insfin Insurance & Finance Group Pty Ltd v Razor USA LLC [2009] ATMO
81 (“Computer equipment and accessories, computer software, and electronic
equipment” rewritten as “computer software
being insurance
comparator software”); Elan Polo Australia Pty Ltd v Blush Lingerie
Inc [2009] ATMO 29 (“clothing, footwear, headgear and
accessories” rewritten as “ raincoats for infants and children;
gumboots for
infants and children; casual shoes for women, children and
infants”).
- In
New South Wales Dairy Corporation v Murray Goulburn Co-op Corporation
14 IPR 75, Murray Goulburn Co-op had the “MOO” mark registered
in respect of “dairy products”. The New South
Wales Dairy
Corporation filed an application for removal of the MOO mark in relation to all
the goods for which it was registered.
Justice Gummow dismissed the
applications for removal because there had been use of the mark during the
relevant period in relation
to cheese and flavoured milk. His Honour ordered
that the Register be rectified so that the mark was registered only in respect
of “cheese”. His Honour held that “milk” should be
excised from the registration based on an application
made by the applicants
under s 22 of the Trade Marks Act 1955 that use of the MOO mark in
respect of milk would be likely to deceive or cause confusion with the
applicant’s “MOOVE”
branded milk products.
- 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] HCA 63; (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] HCA 63; (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.
- It
follows therefore that Bitek’s failure to amend its application is not
fatal to its argument that the goods to which the
mark applies should be
narrowed to those which Hills has proved have been used. In the end result it
seems to me that the Court
should determine the goods to be included in the
specification by reference to the evidence of use.
- The
evidence of use by Hills is limited to the goods described in [282] which, as I
have already said, is wider than the Bitek “amended
application”.
- I
turn to the exercise of the discretion which is given pursuant to s 101(3)
of the Act.
- Once
non-use has been established the trade mark should be removed “unless
sufficient reason appears for leaving it there”.
In Re Carl Zeiss Pty
Ltd’s Application [1969] HCA 17; (1969) 122 CLR 1, Kitto J said at
11:
It has been urged upon me that no deception of any particular purchaser has been
proved, and that there is no practical interest
of the public to be served by
removing the mark from the register. This seems to me to put the matter the
wrong way round. The
Stiftung’s omission to use the mark for the
statutory period entitles the applicant to have the mark removed from the
register
unless sufficient reason appears for leaving it
there.
- In
Kowa Co Ltd v NV Organon [2005] FCA 1282; 66 IPR 131 I rejected a contention that
s 101(3) required the party seeking the exercise of the discretion to show
“exceptional circumstances”.
Flick J arrived at the same conclusion
in E & J Gallo Winery v Lion Nathan (Australia) Pty Ltd [2008] FCA 934; (2008) 77 IPR
69 at [198] which was not overturned by the Full Court on the appeal. So also
did Bennett J in Pioneer Computers Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR
300 at [168].
- Section
101(4) informs the Registrar (and, on appeal, the Court) of the matters that the
Registrar may take into account in exercising
the discretion under subsection
(3) not to remove a trade mark from the Register. However, s 101(4) does
not purport to limit any
other matters to which the Registrar (or the Court) may
take into account. In determining whether it is reasonable for the mark
to
remain on the Register under s 101(3), s 101(4) permits the court to
take into account the trade mark owner’s use of the
mark on goods which
are “similar to” the goods specified in the registration.
- Hills
submitted that its registered goods are “similar goods” to
Bitek’s television installation accessories.
Accordingly, it submitted
that notwithstanding a lack of evidence concerning use of television
installation accessories by Hills
the Court should retain Hills’
registration in its current form as a matter of discretion. Hills accepted that
it cannot establish
use of products beyond those which Bitek conceded there is
evidence of use, except as I have said remote controls and televisions.
However
it asserted that s 101(4) operates to permit the DGTEC registration to
remain in its current form because Hills has established
use of goods which are
“similar goods” to television installation accessories.
- Hills
also relied on the decision of Bennett J in Pioneer Computers Australia Pty
Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300. In that case Pioneer KK was able to show it
had used its mark on some but not all of the goods in respect of which it was
registered.
It sought to persuade the Court to exercise its discretion under
s 101(3) to allow the mark to remain on the Register in respect
of all of
the goods covered by the original registration notwithstanding there was no
evidence of use of some of the goods. Pioneer
KK argued that the public
interest would be best served by the mark remaining on the Register in its
original form. Brand extension
and the convergence of digital technology meant
there was a likelihood of deception and confusion amongst consumers if
particular
goods were excised from Pioneer’s registration. Justice
Bennett accepted Pioneer KK’s argument and in an exercise of
the
Court’s discretion under s 101(3) allowed the registration to remain
unamended.
- That
is not the case on this application. I have found that the use of the DIGITEK
mark is not likely to deceive or cause confusion.
The premise upon which
Bennett J relied does not exist on this application.
- Bitek
submitted that s 101(4), which was inserted into the Act by the Trade
Marks Amendment Act 2006 (Cth), does not alter the discretionary power
afforded to the Court under s 101(3). Section 101(4) merely informs
s 101(3) because
the use of a trade mark on closely related goods could
already be taken into account under s 101(3): Pioneer Computers
Australia Pty Ltd v Pioneer KK [2009] FCA 135; 176 FCR 300.
- Bitek
submitted that s 101(3) does not save Hills’ registration because
there is no evidence of use of similar or closely related
goods. The only
evidence of use relates to a limited group of products which Bitek mainly
excluded from its application for removal.
- In
my opinion, Hills’ argument should be rejected. The fact that it has used
its mark in respect of goods which are similar
to those goods marketed by Bitek
is not in my opinion to the point. The circumstance which is addressed in
s 101(4) is whether Hills
has used the mark in respect of similar goods to
those to which the application relates. In Hills’ case it has not used
the
goods except in relation to set-top boxes, remote controls, digital video
recorders with hard drive, televisions, CD and MP3 players,
DVD players, micro
sound systems, iPod docking speakers and web-based cameras. I do not think
there is any evidence to suggest any
use of any similar goods to those proved
used by Hills which ought to be retained in the statement of goods.
- For
those reasons, I would not exercise my discretion under s 101(3) in favour
of Hills.
CONCLUSION
- In
my opinion, it would be appropriate to make an order that the Registrar amend
the registration of DGTEC’s trade mark so
that it
reads:
Digital and electronic products including set top boxes, remote controls,
digital video recorders with hard drive, televisions, CD
and MP3 players, DVD
players, micro sound systems, iPod docking speakers and web-based
cameras.
INFRINGEMENT PROCEEDING
- In
this proceeding Hills asserts that Bitek has infringed its trade mark and it
seeks relief pursuant to s 20(2) of the Act. Section
20 of the Act
provides that if a trade mark is registered the owner of that trade mark has the
exclusive rights to use the trade
mark and the exclusive rights to authorise
other persons to use that trade mark in relation to the goods and/or services in
respect
of which the trade mark is registered: s 20(1).
- Those
rights arise as from the date of registration of the trade mark: s 20(3).
The “date of registration” of the trade
mark is defined in s 6
of the Act to mean:
(a) in relation to the registration of a trade mark in respect of particular
goods or services other than a trade mark to which paragraph
(b) applies —
the day from which the registration of the trade mark in respect of those goods
or services is taken to have
had effect under subsection 72(1) or (2);
or
(b) in relation to a trade mark to which subsection 239A(3) applies — the
date referred to in subsection 239A(4).
- In
this case s 72(1) applies which means that the registration of the trade
mark is taken to have had effect from (and including)
the filing date in respect
of the application for registration: s 72(1). The filing date was 23
January 2002.
- Section 20(2)
provides for the right of the owner of the trade mark to obtain relief under the
Act if the trade mark has been infringed.
However, regard must be had to
s 120 of the Act which provides for when a registered trade mark has been
infringed. Section 120
applies to both goods and services but, in this case,
the infringement is said to be only in relation to goods. Section 120
relevantly
provides:
120 (1) A person infringes a registered trade mark if the person
uses as a trade mark a sign that is substantially identical with,
or deceptively
similar to, the trade mark in relation to goods or services in respect of which
the trade mark is registered.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(2) A person infringes a registered trade mark if the person uses as a trade
mark a sign that is substantially identical with, or
deceptively similar to, the
trade mark in relation to:
(a) goods of the same description as that of goods (“registered
goods”) in respect of which the trade mark is registered;
or
(b) services that are closely related to registered goods;
or
(c) services of the same description as that of services (“registered
services”) in respect of which the trade mark is
registered;
or
(d) goods that are closely related to registered
services.
However, the person is not taken to have infringed the trade mark if the person
establishes that using the sign as the person did
is not likely to deceive or
cause confusion.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(3) A person infringes a registered trade mark
if:
(a) the trade mark is well known in Australia;
and
(b) the person uses as a trade mark a sign that is substantially identical with,
or deceptively similar to, the trade mark in relation
to:
(i) goods (“unrelated goods”) that are not of the same description
as that of the goods in respect of which the trade
mark is registered
(“registered goods”) or are not closely related to services in
respect of which the trade mark is
registered (“registered
services”); or
(ii) services (“unrelated services”) that are not of the same
description as that of the registered services or are not
closely related to
registered goods; and
(c) because the trade mark is well known, the sign would be likely to be taken
as indicating a connection between the unrelated goods
or services and the
registered owner of the trade mark;
and
(d) for that reason, the interests of the registered owner are likely to be
adversely
affected.
Note 1: For registered trade mark see section 6.
Note 2: For deceptively similar see section 10.
Note 3: For well known in Australia see subsection (4).
Note 4: In addition, the regulations may provide for the effect of a protected
international trade mark: see Part 17A.
(4) In deciding, for the purposes of paragraph (3)(a), whether a trade mark is
“well known in Australia”, one must take
account of the extent to
which the trade mark is known within the relevant sector of the public, whether
as a result of the promotion
of the trade mark or for any other
reason.
- Section
120 provides three alternative tests for infringement each of which are relied
upon by Hills in this proceeding.
- It
was not in dispute that Bitek has since 2003 used the mark DIGITEK (for which it
applied for registration on 4 July 2003) in relation
to antennas, cables
(including speaker, coaxial, data and security), plasma TV brackets, leads, AV
switch selectors, connectors,
wall plates of various types, splitters, TV
mounting hardware, video senders, video intercoms, industry tools, remote
controls, multi-switches,
set-top boxes, cable ties and cable clips. Hills
contended that Bitek had used the mark in relation to other “television
installation
consumables”, but so much was denied by Bitek. However, Mr
Bialecki’s evidence was that Bitek has used DIGITEK in relation
to
“other installation consumables”. There was no further evidence as
to what was meant by other installation consumables
and that evidence need not
be further addressed.
- Hills
contended that Bitek’s use of DIGITEK in respect of set-top boxes,
antennas, cables, splitters, AV selectors, remote
controls, video intercoms,
switches and multi switches amounts to infringement of the DGTEC mark. Bitek
admitted using its mark
in respect of those goods.
- The
defence raises a number of issues. First, whether DIGITEK is deceptively
similar to DGTEC, DGTEK or DGTECH: s 120(1). Secondly,
again in relation
to s 120(1), whether the goods sold by Bitek under the DIGITEK mark are,
leaving aside set-top boxes and remote
controls, within the scope of the goods
presently the subject of Hills’ registered trade mark. Thirdly, whether
under s 120(2),
the goods on which the Bitek mark is used are goods of the
same description as those which are the subject of the Hills’ registered
trade mark. Bitek argued it has a defence to infringement under s 120(2),
because the use of its mark since 2004 did not, and is
not likely to, deceive or
cause confusion. Fourthly, if the respective goods are unrelated and, in those
circumstances, the question
whether Hills’ trade mark is well known in
Australia: s 120(3). Fifthly, if Bitek is found to have infringed the
DGTEC mark,
Bitek relied upon s 122(1)(fa) of the Act contending that the
Bitek trade mark should be registered.
- Section 122(1)(fa)
provides:
In spite of section 120, a person does not infringe a registered trade mark
when:
...
(fa) both:
(i) the person uses a trade mark that is substantially identical with, or
deceptively similar to, the first-mentioned trade mark;
and
(ii) the court is of the opinion that the person would obtain registration of
the substantially identical or deceptively similar
trade mark in his or her name
if the person were to apply for it;
...
Section 120(1)
- Because
I have found that the DGTEC mark and DIGITEK are “deceptively
similar” the remaining issue that needs to be addressed
under
s 120(1) is whether the goods Bitek has sold under the DIGITEK brand are
within the scope of the goods for which the DGTEC
mark is registered.
- Hills
argued that several products sold by Bitek, including set-top boxes, remote
controls, antennas, cables, splitters, AV selectors,
video intercoms, switches
and multi switches, fall within the description of Hills’ registered
goods.
- With
the exception of set-top boxes and remote controls, Bitek denied that the goods
in respect of which Bitek has used the DIGITEK
mark are goods in respect of
which the DGTEC mark is registered. Bitek made that concession in
counsel’s opening submissions.
Because of that concession I shall not act
upon Mr Griggs’ evidence to the effect that remote controls are not both
digital
and electronic.
- Hills
asserted that Bitek’s sale of digital set-top boxes constitutes an
infringement of its trade mark because set-top boxes
are decoders. Bitek
conceded that digital set-top boxes are decoders and as such fall within the
scope of Hills’ registered
goods.
- Hills
asserted that the term “digital and electronic products” should be
interpreted disjunctively so that its registration
of DGTEC extends to both
digital products and electronic products. If this interpretation is accepted,
Hills’ registration
would cover digital products, electronic products and
goods which can be considered both digital and electronic products.
- If
that construction were given to Hills’ goods, Hills submitted, some of the
goods sold by Bitek fall within the residual
description of “digital and
electronic products”. Hills relied on the evidence of Mr Griggs that
antennas and DVID and
HDMI cables are digital products and that splitters, AV
selectors, remote controls and video intercoms sold by Bitek are electronic
products. His evidence was that switches and multi switches, and a subset of
antennas are both digital and electronic products.
I do not accept his evidence
in relation to remote controls because of the concession made by Bitek’s
counsel to which I have
referred: [331].
- Mr
Griggs also said that wall plates, TV brackets, stands, audiovisual cables,
component video cables and S-video cables are neither
digital nor electronic
products. Hills therefore did not allege any infringement for the use of the
DIGITEK mark in relation to those
products.
- Bitek
submitted that the description “digital and electronic products”
should be read conjunctively so that Hills’
registration is limited to
goods which are both digital and electronic. Bitek asserted that to interpret
“digital and electronic
products” disjunctively would impermissibly
broaden the scope of Hills’ registered goods so that it included different
goods such as computers.
- Bitek’s
witnesses, Mr Matacastri, Mr Gigliotti and Mr Kaczmarczyk said that the TV
installation accessories sold by Bitek,
with the exception of set-top boxes, do
not fall within the range of goods covered by the Hills registration. They
asserted that
the DIGITEK branded TV installation accessories were not both
digital and electronic products.
- Bitek
submitted that even if the Court accepted the evidence of Mr Griggs in
preference its own witnesses, the only goods which would
be covered by
Hills’ registration in addition to set-top boxes, would be splitters,
multi switches and a subset of antennas
containing built-in amplifiers. Bitek
did not directly argue that splitters and the subset of antennas were both
digital and electronic.
- For
the reasons already given, I am of the opinion that the words “digital and
electronic” should be read conjunctively
so that the goods to which the
mark applies must have both attributes.
- The
dispute between the witnesses came down to whether switches and multi switches,
and a subset of antennas are both digital and
electronic. Bitek conceded that
set-top boxes were of that kind. Mr Griggs was cross-examined but not directly
on his evidence.
Insofar as he was cross-examined, he did not resile from the
proposition contained in his written evidence. No application was
made to
cross-examine the three Bitek witnesses.
- Bitek
has numbers on its side but that is not a satisfactory way of resolving an
evidential dispute. There is nothing in the rest
of the evidence which makes
either of two competing statements or opinions more likely to be credible.
- I
simply cannot on the evidence resolve the issue. I cannot determine whether
switches and multi switches, and a subset of antennas
are digital and electronic
or only digital or electronic. As Hills has the onus of establishing
infringement, it follows that they
have not established the use of the DIGITEK
mark in relation to switches and multi switches and any subset of antennas which
are
goods the subject of Hills’ statement of goods in that respect.
- I
do not think that it has been proved that any of the goods used under the
DIGITEK mark with the exception of set-top boxes fall
within the statement of
goods under the Hills’ mark. Bitek conceded that remote controls were
within Hills’ statement
of goods. I therefore am of the opinion that the
claim under s 120(1) should be dismissed, except in relation to set-top
boxes and
remote controls.
Section 120(2)
- Section
120(2) applies to the use of a mark that is deceptively similar to a registered
trade mark in relation to goods which are
“of the same description”
as the goods in respect of which the trade mark is registered.
- I
have found that the DGTEC and DIGITEK marks are “deceptively
similar”. The question whether the goods in respect of
which the DIGITEK
mark has been used are goods of the same description as Hills’ registered
goods requires a slightly different
focus to the similar inquiry carried out in
respect of s 44(1). This is because a comparison must be made between
Hills’ registered
goods and the goods which Bitek has used, rather than
the goods in respect of which it sought registration. An infringement
proceeding
must of course address actual events rather than be the subject of a
notional inquiry.
- However,
the result is the same. The notional inquiry, as I have said, in some respects
had regard to the actual goods and sales
after the priority date. For the
reasons already given, I do not, with the exception of set-top boxes, accept
that Bitek’s
goods are goods of the same description as the Hills’
goods.
- Because
of that last mentioned finding, I do not need to decide whether Bitek has
established the use of the DIGITEK mark is likely
to deceive or cause confusion
but again if I am wrong about the finding I should address that issue.
- Hills
argued that the defence is not open to Bitek because its use of the DIGITEK mark
is likely to deceive or cause confusion. Hills
submitted that the conclusion
about deceptive similarity and similarity of goods informs consideration of
whether actual use is likely
to deceive or cause confusion. Hills submitted that
as the DIGITEK mark is deceptively similar to DGTEC and Bitek’s use of
the
mark relates to goods which are of the same description as the goods in respect
of which the DGTEC mark is registered, Bitek’s
use is likely to deceive or
cause confusion. I reject that submission because I have already found that the
DGTEC and the DIGITEK
goods are not, set-top boxes apart, goods of the same
description.
- Bitek
asserted that the defence under s 120(2) is made out because the evidence
disclosed that Bitek used the DIGITEK mark in a manner
which was not likely to
deceive or cause confusion. Bitek submitted that the DIGITEK mark was used on
different goods to those the
subject of the DGTEC mark; the parties operated in
different market segments and trade channels; DGTEC goods were sold in retail
stores whereas DIGITEK products were not sold in retail stores; there was
evidence that the company was content with the existence
of the DIGITEK mark if
set-top boxes were excluded from DIGITEK’s registration; and DIGITEK
branded products were accompanied
by the phrase “Complete Digital
Solutions” making it distinct from DGTEC branded products. Bitek also
argued there was
no evidence of actual confusion.
- Hills
asserted that there was evidence of actual confusion. Ms Meinberg, a
receptionist employed by Hills, declared in a statutory
declaration dated 23
December 2005 that she fielded telephone calls from customers who had confused
DIGITEK with DGTEC.
- Hills
submitted that in any event it is not necessary to prove actual confusion under
s 120, but only that there is a likelihood
of confusion.
- Hills
submitted that the Court’s conclusions about deceptive similarity and the
similarity between Hills’ and Bitek’s
goods should inform its
consideration of whether the actual use of the mark was likely to deceive or
cause confusion.
- In
my opinion, Bitek has established that apart from the set-top boxes and remote
controls there is no likelihood of deception or
confusion in the use of the
DIGITEK mark or the DIGITEK goods. The goods are not similar goods or goods of
the same description.
The infringement claim under s 120(2) fails, except
in relation to set-top boxes and remote controls.
Section 120(3)
- That
leaves for consideration the question whether Bitek has infringed the Hills
DIGITEK mark because of the provision of s 120(3).
- An
infringement proceeding will succeed under s 120(3) if the party alleging
the infringement can establish that that party’s
trade mark is well known
in Australia and that a person has used a trade mark which is deceptively
similar to that well known trade
mark in relation to goods which are not of the
same description as the goods in respect of which the trade mark is registered
and,
because the trade mark is well known, the sign would be likely to be taken
as indicating connection between the unrelated goods.
- For
reasons which I have already given, these goods are unrelated for the purpose of
s 120(3)(b)(i) because they are not goods of
the same description. No more
needs to be said about that.
- However,
that does not assist Hills unless Hills can establish that its trade mark is
well known in Australia. It relied upon the
same evidence as it adduced in
relation to the claim that it had a reputation under s 60 of the Act.
- In
my opinion for the same reasons given in relation to that aspect of its claim,
the DGTEC mark is not well known in Australia.
It may be that the goods to
which the mark attach were at the relevant time well known but, in my opinion,
there is no evidence
before the Court that the mark itself was well known. The
infringement claim under s 120(3) fails.
Section 122
- In
any event, Bitek claimed as a complete defence to an infringement proceeding the
benefit of s 122(1)(fa). It claimed that that
paragraph was engaged
because it had used a trade mark that was deceptively similar to Hills’
mark and the Court should be
of the opinion in view of the dismissal of the
appeal proceeding that Bitek would obtain registration of the deceptively
similar
trade mark in Bitek’s name.
- In
my opinion, Bitek is entitled to rely upon s 122(1)(fa) because it is
entitled, in my opinion, to registration of the mark for
which it already has
applied and which as a result of these reasons will obtain.
- In
those circumstances it has not infringed Hills’ DIGITEK mark except in two
respects, and so much was conceded by Bitek.
For a period of time Bitek
marketed under the DIGITEK name set-top boxes which it admitted is a decoder and
remote controls. Those
products are within the statement of goods of the
Hills’ mark and the defence under s 122 would not
apply.
CONCLUSION
- In
my opinion, Hills is entitled to relief in the infringement proceeding, but only
in respect of the infringement by Bitek of the
Hills’ mark by the use of
the DIGITEK mark in relation to set-top boxes and remote controls.
- The
orders should reflect these reasons.
- That
finding will require further consideration.
SECTIONS 52 AND 53 OF THE TRADE PRACTICES ACT 1974 (FAIR TRADING ACT)
- For
this claim as part of the infringement proceeding Hills alleges, and Bitek
denies, that between May 2001 and July 2003 the company
substantially promoted
and sold set-top box products with the result that by July and/or August 2003
the company had developed a
state of knowledge by way of reputation by consumers
of the DGTEC set-top box products.
- Hills
said it acquired a reputation in relation to DGTEC set-top boxes. It puts the
same submissions as under its s 60 argument.
- It
is contended the sale by Bitek of set-top products using the name DIGITEK was,
and is likely to, convey to consumers misrepresentations:
(a) that
Bitek’s goods are DGTEC products in breach of s 52 of the TPA;
(b) that Bitek’s goods have the sponsorship or approval of the company
and/or Hills in breach of s 52 and/or s 53(c) of the
TPA; and/or
(c) that Bitek has the sponsorship or approval of or is affiliated with the
company and/or Hills in breach of s 52 and/or s 53(d)
of the TPA.
- I
have already found that the Hills DGTEC mark had not acquired the reputation
within the meaning of s 60 and was not well known
within the meaning of
s 120(3) of the Act.
- As
I understand the s 52 case, the fact of the reputation of the mark makes
Bitek’s marketing of set-top boxes under the DIGITEK
mark a
misrepresentation that the DIGITEK set-top boxes are marketed by DGTEC or are
DGTEC products.
- I
have already found that the use of the Bitek mark was not in respect of similar
goods or the same goods for the purposes of s 44
of the Act.
- I
have also found that Bitek has infringed by the use of the DIGITEK mark in
respect of set-top boxes.
- It
is not clear to me on the submissions which have been made whether Hills seeks
separate or additional relief under the TPA to
which it is not entitled under
the Act.
- Submissions
which were made by both parties in respect of this cause of action were very
brief and did not identify what was said
to be the misrepresentations that were
made.
- I
propose in respect of this cause of action to allow the parties to make further
submissions having regard to the findings made
in respect of the claims made
under the Act.
- It
was agreed that if a contravention were established the question of damages
would be decided at a later time. In those circumstances,
liability under the
TPA could be determined with damages.
- The
parties should bring in short minutes of order to reflect these reasons within
14 days. Hills should also if it wishes to pursue
relief under the TPA provide
written submissions in relation to liability having regard to the findings
within 21 days. If Hills
wishes to pursue that cause of action and makes those
submissions, Bitek should provide its written submissions in reply within 35
days.
I certify that the preceding three hundred and
seventy-six (376) numbered paragraphs are a true copy of the Reasons for
Judgment herein
of the Honourable Justice Lander. |
Associate:
Dated: 15 February 2011
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