Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1)

Link copied
Case Copied 72 min read

FEDERAL COURT OF AUSTRALIA

Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760

INTELLECTUAL PROPERTY – TRADE MARKS – alleged infringement of s120 Trade Marks Act 1995 (Cth) by software enabled internet postal service – whether mark substantially identical or deceptively similar – whether goods or services in respect of which mark registered – nature of first respondent’s business – nature of software – whether software incidental to service – effect of undertaking given during trial

INTELLECTUAL PROPERTY – TRADE MARKS – assessment of damages – whether damages at large applicable to trade mark infringement – whether wrongful conduct enough – whether applicant established damage

INTELLECTUAL PROPERTY – TRADE PRACTICES – whether breach of ss 52 and 53 Trade Practices Act 1974 (Cth) (TPA) – application of established principles – whether confusion transient and ephemeral – whether representation of sponsorship or approval

INTELLECTUAL PROPERTY – TORT – wrongful passing off – whether applicant established elements pursuant to recognised principles – whether sufficient reputation in mark – likelihood of injury to business

Held: application allowed in part – trade mark infringement established prior to undertaking – passing off and TPA claim dismissed – no damages payable – applicant entitled to injunctive relief in accordance with undertaking

Federal Court Act 1976 (Cth) s 51A
Trade Marks Act 1995 (Cth) s 10, s 20, s 120(1), s 126
Trade Practices Act 1974 (Cth) s 52, s 53, s 75B
Federal Court Rules O 35 r 11

Anakin Pty Ltd v Chatswood BBQ King Pty Ltd [2008] FCA 1517 cited
Angove’s Pty Ltd v Johnson and Eclar Investments Pty Ltd (1981) 55 FLR 1 cited
Angove’s Pty Ltd v Johnson (1983) 66 FLR 216 cited
Astrazeneca Pty Ltd v GlaxoSmithKline Australia Pty Ltd [2006] FCAFC 22 cited
Australian Home Loans Ltd t/as Aussie Home Loans v Phillips (1998) 40 IPR 392 cited
Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 cited
British Telecommunications PLC v One In A Million Ltd (1998) 42 IPR 289 distinguished
Cadbury Schweppes Pty Ltd v Darrell Lea Chocolate Shops Pty Limited (2007) 159 FCR 359 cited
Campomar Sociedad, Limitada v Nike International Ltd [2000] 202 CLR 45 cited
Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25 cited
Community First Credit Union Ltd v Khan (unreported, Supreme Court of New South Wales, 30 August 1995) cited
Crazy Ron’s Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 209 ALR 1 cited
CSR Ltd v Resource Capital Australia Pty Ltd (2003) 128 FCR 408 cited
de Cordova v Vick Chemical Co (1951) 68 RPC 103 cited
Enzed Holdings Ltd v Wynthea Pty Ltd (1984) 57 ALR 167 followed
Erven Warnink Besloten Vennootschop v J Townend and Sons (Hull) Ltd (1979) AC 731 cited
Ex parte O’Sullivan; Re Craig (1944) SR (NSW) 291 cited
Fencott v Miller (1983) 152 CLR 570 cited
Fraser Henleins Pty Ltd v Cody (1945) 70 CLR 100 cited
Hansen Beverage…

CaseChat AU logo

Keep reading for free

Create a free CaseChat account to read Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1... and more:

  • Read every judgment in full
  • Ask AI and get answers linked to paragraphs
  • See how each paragraph was cited in later cases
  • Download judgments as PDF or Word
Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details
Case
[2008] FCA 1760
Decision Date

CaseChat Overview and Summary

The case of Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) was heard by the Federal Court of Australia, with the primary issue being the alleged infringement of the Bing! Software's registered trade mark by Bing Technologies Pty Limited. Bing! Software, which had registered Trade Mark 836622 for various goods and services including software for the legal profession, alleged that Bing Technologies, a company in the business of providing internet protocol postal mail services, had infringed upon this trade mark by using the word "Bing" in its business operations. The legal issues before the court included whether Bing Technologies' use of the term "Bing" constituted an infringement of Bing! Software's trade mark rights and whether this use was likely to deceive or cause confusion among the public.

The court examined the nature of Bing Technologies' business, which primarily involved mail services rather than software sales, and noted that the respondents argued their use of the word "Bing" was unrelated to the classes of goods and services specified in Bing! Software's trade mark. The court also considered the existence of other entities using the term "Bing" in various unrelated sectors, which the respondents argued diminished the likelihood of confusion among the public. Despite these arguments, the court determined that the core issue was whether Bing Technologies' use of "Bing" in its business activities constituted an infringement of Bing! Software's registered trade mark rights. The court found that Bing Technologies' use of the term "Bing" in their mail services could be seen as an infringement, as it had the potential to cause confusion or deception among the public, particularly given Bing! Software's established reputation and extensive use of the term in its software products.

The court issued an interim injunction to prevent Bing Technologies from using the term "Bing" in their business operations until the matter could be fully heard and determined. The court also set a timeline for written submissions on the form of final injunctive relief and costs, scheduled a hearing date, and reserved the right to award costs and allowed for applications to be made by the parties. This decision underscores the importance of trade mark protection in maintaining the integrity and reputation of businesses, especially those with established brand identities in competitive markets.

Orders

Orders of the court

1. The parties file written submissions by 4.00 pm on 28 November 2008 as to the form of the final injunctive relief and costs.

2. The matter be listed for hearing at a date to be fixed.

3. Costs be reserved.

4. Liberty to apply.

Note:

Background

Background to the litigation

For convenience, I will continue to refer to BING! Software Pty Ltd ACN 079 281 197 as “the applicant” in these proceedings, and Bing Technologies Pty Ltd ACN 098 420 903 and Mr Cranitch as “the respondents”.BACKGROUND Both the applicant and the first respondent are companies incorporated under the Corporations Act 2001 (Cth). The sole director of the applicant is Mr Emmanuel Theodosiou. At all material times Mr Cranitch was in effective control of the first respondent through his roles as managing director, secretary and Chief executive officer of the first respondent. Mr Cranitch, through an associated company, was also in control of a majority of the issued share capital of the first respondent. The applicant is the registered proprietor of Trade Mark 836622 with a priority date of 24 May 2000 (“the Bing Trade Mark”).Registered Trade Mark 836622 is as follows: So far as is relevant in these proceedings the Bing trade mark is registered in respect of the following goods and services:Class 9Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector;Class 35Distribution and sales of computer software.Class 42Design of computer software; programming maintenance, upgrading and updating of computer software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector… The applicant commenced business in 1997 by marketing (primarily to law firms) and licensing a new Family Court document automation software package under the trade mark BING!. The Bing trade mark appears on the software (on-screen), on software user guides and on the footer of Family Court documents created using the software. The Bing trade mark and the word BING! are also used on the applicant’s software and marketing material. The applicant maintains a website featuring the Bing trade mark, and since 1997 has also developed software products for various markets, all incorporating the word and following exclamation mark “BING!”. The applicant lead evidence that its annual fees for the past three years have exceeded $350,000, and that it maintains a list of customers, with 1400 law firms having purchased BING! software since 1997. The applicant submits that currently more than 500 entities subscribe to its products. In his affidavit of 3 December 2007, Mr Cranitch deposed that the business of the first respondent was the provision of an internet protocol postal mail service. The nature of the business is that, by using the service, customers of the first respondent can route letters over the internet and have them printed and posted at points closest to the recipient, with the result that customers experience faster, cheaper and more efficient letter-based communications. Mr Cranitch deposed that the first respondent did not sell a product, rather it sold a service, and that it did not target legal firms as customers in any marketing or advertising. Mr Cranitch deposed further that approximately 90% of the first respondent’s income was derived from posting invoices, statements and debt collection letters.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

COLLIER J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: COLLIER J

While the respondents in the Amended Defence filed 19 November 2007 admitted that the first respondent had used and continued to use the word “Bing” in the course of its business, it otherwise denied the substance of the applicant’s allegations. In summary, the respondents:1.Contended that the first respondent was in the business of supplying mailing services, including distributing and supplying software called EasyPost.2.Denied that they were selling software.3.Said that the word “Bing” was used by the first respondent in connection with mail services and not in respect of the classes of goods or services of the Bing Trade Mark.4.Denied that the word “Bing” was substantially identical or deceptively similar to the Bing Trade Mark.5.Denied that either respondent had infringed the Bing Trade Mark.6.Denied that the first respondent required any authority, sponsorship or approval from the applicant.7.Denied that the respondents had engaged in any conduct in breach of ss 52 or 53 TPA or passing off on the basis that, inter alia:·the first respondent’s business was in a different area of commerce to the business of the applicant;·other trade marks and companies used the word “Bing” in the same, similar and other areas of commerce to the business of the applicant, so the public were not likely to be misled or deceived by the respondents’ use of the word “Bing”;·there is a commonly used piece of software that is distributed as part of the UNIX operating system called Bing. This Bing software was developed in 1995 and was in existence and distributed for six years prior to the company “Bing! Software” being granted its trade mark. Accordingly the public are not likely to be misled or deceived by the respondents’ use of the word “Bing”.CONSIDERATION Both the applicant and the respondents made helpful submissions in these proceedings. The basis of the applicant’s claim so far as it relies on infringement of trade mark is s 20 Trade Marks Act 1995 (Cth) (“the Act”) which provides:(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:(a) to use the trade mark; and(b) to authorise other persons to use the trade mark;in relation to the goods and/or services in respect of which the trade mark is registered.Note 1: For registered owner see section 6.Note 2: For use see section 7.Note 3: In addition, the regulations may provide for the effect of a protected international trade mark: see Part 17A.(2) The registered owner of a trade mark has also the right to obtain relief under this Act if the trade mark has been infringed.Note: For what amounts to an infringement of a trade mark see Part 12.(3) The rights are taken to have accrued to the registered owner as from the date of registration of the trade mark.Note: For date of registration see section 6.(4) If the trade mark is registered subject to conditions or limitations, the rights of the registered owner are restricted by those conditions or limitations.Note: For limitations see section 6.(5) ….