DGTEK v Digiteck I
Lander J has upheld the Registrar’s decision to allow Bitech to register DIGITEK for
“TV installation accessories including external TV antennas, none of the foregoing being set-top boxes” in class 9
in the face of Hills’ prior registration for DGTEC, DGTEK and DGTECH in respect of
“Digital and electronic products including televisions, video players, DVD players, CD players, decoders and cameras” also in class 9.
While the competing marks were deceptively similar, they were not in respect of the same goods or goods of the same description. At :
…. 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.
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:… 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: ….
His Honour also rejected argument that the goods passed through the same trade channels, distinguishing the Gallo Full Court’s finding that beer and wine were similar goods because:
Even if Hills had established a reputation, Bitek’s mark would not have been like to deceive or cause confusion as a result of that reputation, so the old form of s 60 still would not have applied.
 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.
In case it became necessary on appeal, Lander J would have rejected Bitek’s attempt to rely on s 44(3) honest concurrent user or “other circumstances”.
Bitech failed on “honest concurrent user” and “other circumstances” because the use occurred after the priority date.
Under “other circumstances”, Bitek sought to rely on the inconvenience it would suffer through loss of the goodwill it had built up. If it had been permissible to take use after the priority date into account under “other circumstances”, Lander J would still have rejected this:
 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 Industries Limited v Bitek Pty Ltd  FCA 94
ps The decision also addresses removal for non-use and infringement issues which, in view of the length of this post, will need to be the subject of a later post.