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

FEDERAL COURT OF AUSTRALIA

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

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

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

Judge: LANDER J

Date of judgment: 15 February 2011

Corrigendum: 4 May 2011

Catchwords: INTELLECTUAL PROPERTY – Trade marks – registration – application for registration of mark "DIGITEK" – opposition to registration under s 44(1) – whether mark deceptively similar to opponent's registered trade mark "DGTEC" – whether the applicant's TV installation accessories and goods the subject of opponent's trade mark (digital and electronic products including televisions, video players, DVD players, CD players, decoders and cameras) are "goods of the same description" within meaning of s 14(1) of Trade Marks Act 1995 (Cth). INTELLECTUAL PROPERTY – Trade marks – appeal from Registrar of Trade Marks – standard of proof to be applied in determining grounds of opposition – whether opponent required to satisfy the Court that trade marks should clearly not be registered. INTELLECTUAL PROPERTY – Trade marks – registration – whether honest concurrent use of trade marks established for purposes of s 44(3)(a) – whether evidence of use after the date the application for registration is made may be taken into account under s 44(3) – whether, because of "other circumstances" it is proper to allow registration of the mark under s 44(3)(b). INTELLECTUAL PROPERTY – Trade marks – opposition – whether opponent's marks had acquired a reputation in Australia for purposes of s 60 – nature of evidence required to show reputation considered – whether s 60 subject to s 44(3) – whether applicant's registration would be contrary to law under s 42(b) because its use would constitute misleading and deceptive conduct under s 52 Trade Practices Act 1974 (Cth). INTELLECTUAL PROPERTY – Trade marks – application for removal of trade mark from Register for non-use – application seeking to remove all goods in respect of which the mark is registered – evidence of use of some, but not all of the goods – whether grounds for removal under s 92(4) established – whether s 101(2) affords discretion to remove certain goods from registration notwithstanding that the application seeks removal of all of the goods – whether permissible for the Court to amend a registration to ensure that it accords with the scope of established use – exercise of discretion under s 101(3) – scope of s 101(4) – whether the opponent has established use of "similar goods" under s 101(4) - whether order for removal from the Register operates retrospectively to provide a defence to infringement. INTELLECTUAL PROPERTY – Trade marks – infringement – whether infringement under ss 120(1), (2) and (3) – 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.