Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 3) - [2008] FCA 1869

FEDERAL COURT OF AUSTRALIA
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 3) [2008] FCA 1869
INTELLECTUAL PROPERTY – TRADE MARKS – infringement of s120 Trade Marks Act 1995 (Cth) by software enabled internet postal service – form of injunctive relief
COSTS – applicant successful on one cause of action – whether costs should follow event – whether circumstances justify apportioning percentage of costs – effect of undertaking given during trial
Held: declarations and injunction ordered – applicant not completely successful – circumstances justify awarding applicant its costs at 80%
Federal Court of Australia Act 1976 (Cth) s 43(2)
Trade Marks Act 1995 (Cth) s 7(4), s 10, s 120(1)
Trade Practices Act 1974 (Cth)
Australian Trade Commission v Disktravel [2000] FCA 62 cited
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760 related
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 2) [2008] FCA 1761 related
Dodds Family Investment Pty Ltd v Lane Industries Pty Ltd (1993) 26 IPR 261 cited
Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2002) 54 IPR 495 cited
Dr Martens Australia v Figgins Holdings Pty Ltd (No 2) [2000] FCA 602 cited
Foots v Southern Cross Mine Management Pty Ltd (2007) 241 ALR 32 cited
Hughes v Western Australian Cricket Association (Inc) (1986) ATPR 40-748 cited
New South Wales Dairy Corporation v Murray Goulburn Co-operative Company (1989) 14 IPR 75 considered
Oshlack v Richmond River Council [1998] 193 CLR 72 cited
Probiotec Ltd v The University of Melbourne (2008) FCAFC 5 cited
Verna Trading Pty Ltd v New India Assurance Pty Ltd [1991] 1 VR 129 cited
BING! SOFTWARE PTY LTD ACN 078 281 197 v BING TECHNOLOGIES PTY LIMITED ACN 098 420 903 and STEVEN PATRICK CRANITCH
QUD 234 of 2007
COLLIER J
10 DECEMBER 2008
BRISBANE

IN THE FEDERAL COURT OF AUSTRALIA

QUEENSLAND DISTRICT REGISTRY

QUD 234 of 2007

BETWEEN:
BING! SOFTWARE PTY LTD ACN 078 281 197
Applicant

AND:
BING TECHNOLOGIES PTY LIMITED ACN 098 420 903
First Respondent

STEVEN PATRICK CRANITCH
Second Respondent

JUDGE:

COLLIER J

DATE OF ORDER:

10 DECEMBER 2008

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:
1.It is declared that the use by the first respondent of the word “bing” to describe, name or refer to software utilised by it or its customers was an infringement of the applicant’s Trade Mark 836622.
2.It is declared that the first respondent’s conduct trading under and by reference to a name which includes the word “bing” does not infringe the said trade mark.
3.In relation to all references to software in the course of the first respondent’s business, the respondents are restrained by injunction:
a.   from using the word “bing” when directly referring to software in any documentation, on websites, or otherwise;
b.   from referring to software itself as “bing” or any other combination of words using the word “bing”;
c.   where there is a reference to software from referring to it as “bing” software, or “bing”…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2008] FCA 1869
Decision Date: 10 December 2008

CaseChat Overview and Summary

Bing! Software Pty Ltd sought relief in the Federal Court of Australia against Bing Technologies Pty Ltd, claiming infringement of its registered trade mark 836622. The applicant argued that the respondent's use of the word "bing" in relation to software and associated products was an infringement of its trade mark rights, while the respondent contended that its trade name and use of "bing" did not infringe the applicant's trade mark. The court was tasked with determining whether the respondent's use of "bing" in reference to software constituted an infringement of the applicant's trade mark and whether the respondent's trade name, which included the word "bing", infringed the trade mark.

The central legal issue before the court was whether the respondent's use of the word "bing" in connection with software and related products constituted an infringement of the applicant's registered trade mark 836622. The court examined the scope of the trade mark registration, the nature of the respondent's use of the word "bing", and whether the use was likely to cause confusion or deception among consumers. The court also considered whether the respondent's trade name, which included the word "bing", infringed the applicant's trade mark rights.

The court found that the respondent's use of the word "bing" to describe, name, or refer to software utilised by it or its customers did indeed infringe the applicant's trade mark 836622. The court held that this use was likely to cause confusion or deception among consumers, thereby infringing the trade mark. However, the court ruled that the respondent's conduct trading under and by reference to a name which includes the word "bing" did not infringe the trade mark. Consequently, the court issued an injunction restraining the respondents from using the word "bing" in certain specified contexts when referring to software. The court also ordered the respondents to pay certain costs associated with the proceedings.

The court's final orders declared that the respondent's use of "bing" to describe or refer to software constituted an infringement of the applicant's trade mark, while the respondent's trade name did not infringe. The court restrained the respondents from using "bing" in various contexts when referring to software and ordered the respondents to pay specified costs to the applicant.

Orders

Orders of the court

1. It is declared that the use by the first respondent of the word “bing” to describe, name or refer to software utilised by it or its customers was an infringement of the applicant’s Trade Mark 836622.

2. It is declared that the first respondent’s conduct trading under and by reference to a name which includes the word “bing” does not infringe the said trade mark.

3. In relation to all references to software in the course of the first respondent’s business, the respondents are restrained by injunction:

a. from using the word “bing” when directly referring to software in any documentation, on websites, or otherwise;

b. from referring to software itself as “bing” or any other combination of words using the word “bing”;

c. where there is a reference to software from referring to it as “bing” software, or “bing” mailroom software or any other combination of words using the name “bing”.

4. The respondents pay the applicant’s costs of the notice of motion filed 16 May 2008.

5. The respondents pay 80% of the applicant’s costs of the amended application filed on 20 November 2007.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

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Decision

Reasons for decision

COLLIER J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: COLLIER J

Full text does not contain this section.

IN THE FEDERAL COURT OF AUSTRALIA
QUEENSLAND DISTRICT REGISTRY	QUD 234 of 2007

JUDGE:	COLLIER J
DATE OF ORDER:	10 DECEMBER 2008
WHERE MADE:	BRISBANE