Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 2)

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FEDERAL COURT OF AUSTRALIA

Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 2) [2008] FCA 1761

PRACTICE AND PROCEDURE – application for leave to reopen case to adduce further evidence following conclusion of trial and judgment reserved – circumstances invoking Court’s discretion – whether interests of justice require reopening

Held: application dismissed – reopening not in interests of justice – tactical decision – evidence unlikely to affect result – principle of finality of litigation precludes reopening

Evidence Act 1995 (Cth) s 56
Trade Practices Act 1974 (Cth) s 52, s 53
Federal Court Rules O 35 r 11

Australian Securities and Investments Commission v Rich [2006] NSWSC 826 cited
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760 related
Gulf Pacific Pty Ltd v Londish [1992] FCA 502 cited
Hawthorn Glen v Aconex (No 1) [2007] FCA 2010 cited
Inspector-General in Bankruptcy v Bradshaw [2006] FCA 22 considered
McCarthy v McIntyre [2000] FCA 1250 cited
MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 cited
Murray v Figge (1974) 4 ALR 612 considered
Smith v New South Wales Bar Association (No 2) (1992) 176 CLR 256 cited
Urban Transport Authority of NSW v Nweiser (1992) 28 NSWLR 471 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
25 NOVEMBER 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:

25 NOVEMBER 2008

WHERE MADE:

BRISBANE

THE COURT ORDERS THAT:

The Notice of Motion filed 16 May 2008 be dismissed.

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 eSearch on the Court’s website.


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:

25 NOVEMBER 2008

PLACE:

BRISBANE

REASONS FOR JUDGMENT

  1. On 16 May 2008 Bing Technologies Pty Limited ACN 098 420 903 and Steven Patrick Cranitch (the respondents) filed a notice of motion in these proceedings. The substance of the notice of motion was that the respondents sought the leave of the Court to tender additional evidence notwithstanding that the hearing had concluded and judgment reserved. The respondents sought the following orders:

    1.An order that the First and Second Respondents be granted leave to tender as evidence in the trial of these proceedings the Affidavit of Steven Patrick Cranitch sworn on 9 April 2008.

    2.Such further orders as the Court may deem fit; and

    3.An order that the costs of this Motion to…

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Details
Case
[2008] FCA 1761
Decision Date

CaseChat Overview and Summary

The case of Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 2) concerns an application by Bing! Software Pty Ltd to restrain Bing Technologies Pty Ltd from using the name "Bing" in relation to the distribution, sale, and supply of software in Australia. The dispute originated from the primary proceedings where Bing! Software alleged trademark infringement, misleading and deceptive conduct, and wrongful passing off by Bing Technologies. The respondents undertook to refrain from using "BING!" when referring to their software directly, as outlined in an affidavit sworn on 12 March 2008. Subsequently, Bing Technologies sought to present additional evidence in the form of an affidavit dated 9 April 2008, detailing further steps taken to comply with the earlier undertaking.

The court considered whether the new evidence presented in the 9 April 2008 affidavit qualified as "fresh evidence" that could justify reopening the case after judgment had been reserved. The court referenced several precedents that established the criteria for admitting fresh evidence, emphasizing that the overriding principle is whether the interests of justice are better served by allowing or rejecting the application. The court noted that the new evidence, while fresh, was not truly unforeseen as it pertained to steps that were already relevant to the proceedings and could have been anticipated.

In dismissing the application for further evidence, the court found that Bing! Software's objection to the additional evidence was inconsistent, given their lack of objection to a similar affidavit presented earlier. The court concluded that Bing! Software had not substantiated the need for additional steps, nor had they demonstrated how any prejudice could not be compensated by a costs order. Consequently, the notice of motion was dismissed.

Orders

Orders of the court

The Notice of Motion filed 16 May 2008 be dismissed.

Note:

Background

Background to the litigation

The respondents’ notice of motion is opposed by Bing! Software Pty Ltd ACN 078 281 197 (the applicant).BACKGROUNDThe primary proceedings The hearing of this matter commenced on 10 March 2008 and concluded on 13 March 2008 (the primary proceedings). On 13 March 2008 at the conclusion of the hearing I reserved judgment. The applicant is the registered proprietor of Trade Mark 836622 with a priority date of 24 May 2000. In the primary proceedings, the applicant, through its amended application and amended statement of claim filed 20 November 2007, alleged the respondents had:·infringed the applicant’s registered trade mark;·engaged in misleading and deceptive conduct in contravention of ss 52 and 53 of the Trade Practices Act 1974; and·engaged in conduct constituting wrongful passing off. The relief sought by the applicant included in summary:·orders permanently restraining the respondents from using the name or sign “bing” and trading under the name or style in connection with the word “bing” with the distribution sale and supply of software within Australia;·the delivery up for destruction of relevant marketing material;·an order that the first respondent change its name forthwith;·an order that the first respondent transfer registration of the domain name to the applicant; and·damages. On 11 March 2008 during the primary proceedings, the first respondent gave an undertaking to the Court through their Counsel. The undertaking was as follows:MR CROWE: Your Honour, while Mr Cranitch is coming to the courtroom, I have instructions from the first respondent to offer an undertaking to the court – to give an undertaking to the court that the first respondent in relation to all references to the software, the subject of these proceedings, will not use the word “BING!” when directly referring to that software in any documentation, on websites, or otherwise. To make that plain it is not offering to change its name, but it is offering an undertaking that it will not refer to the software itself as BING! or any other combination of words using the word “BING!”. (TS 86 ll 18-25) This undertaking given by the respondents was supported by an affidavit of Mr Cranitch sworn on 12 March 2008 and filed in Court on 13 March 2008 (the 12 March affidavit). The 12 March affidavit details the steps taken by the respondents to that date, as well as steps proposed to be taken by the respondents, to comply with the undertaking. The applicant did not object to the 12 March affidavit being filed, and did not seek to cross-examine Mr Cranitch in relation to evidence in the affidavit.The notice of motion On 11 April 2008 the respondents contacted my associate by email and attached letter advising of their intention to file an additional affidavit in the proceedings. The same correspondence, with the addition of a copy of the affidavit, was sent to the applicant. On 16 April 2008, the applicant addressed a letter and email to my associate outlining its objections to the filing of any further evidence.

Evidence

Evidence Before The Court

In summary, as submitted by Mr Crowe SC for the respondents, the 9 April affidavit of Mr Cranitch sets out in detail the numerous steps that have been taken to change all references in software to the word “bing”, wherever they appear, on the website and in all documentation (TS 27 May 2008 p 3 ll 5-7).Adducing further evidence-in-chief – relevant principles It is not in dispute that the Court has the power to grant leave for further evidence-in-chief to be adduced after the trial of the proceeding has concluded and judgment reserved. Indeed this jurisdiction is well recognised: Murray v Figge (1974) 4 ALR 612, Gulf Pacific Pty Ltd v Londish [1992] FCA 502, Urban Transport Authority of New South Wales v Nweiser (1992) 28 NSWLR 471, Smith v New South Wales Bar Association (1992) 176 CLR 256, McCarthy v McIntyre [2000] FCA 1250, Inspector-General in Bankruptcy v Bradshaw [2006] FCA 22, Hawthorn Glen Pty Ltd v Aconex Pty Ltd (No 1) [2007] FCA 2010. In Bradshaw [2006] FCA 22, Kenny J conveniently summarised the circumstances in which the Court will permit further evidence to be adduced between conclusion of the hearing and delivery of judgment as follows:[24] The authorities indicate that, broadly speaking, there are four recognised classes of case in which a court may grant leave to re-open, although these classes overlap and are not exhaustive. These four classes are (1) fresh evidence (Hughes v Hill [1937] SASR 285 at 287; Smith v New South Wales Bar Assn [No 2] (1992) 108 ALR 55 at 61–2); (2) inadvertent error (Brown v Petranker (1991) 22 NSWLR 717 at 728 (application to recall a witness); Murray v Figge (1974) 4 ALR 612 at 614 (application to tender answers to interrogatories); Henning v Lynch [1974] 2 NSWLR 254 at 259 (application to re-open); (3) mistaken apprehension of the facts (Urban Transport Authority of NSW v NWEISER (1992) 28 NSWLR 471 (“UTA”) at 478; and (4) mistaken apprehension of the law (UTA at 478). In every case the overriding principle to be applied is whether the interests of justice are better served by allowing or rejecting the application for leave to re-open: see UTA at 478; also The Silver Fox Co Pty Ltd as Trustee for the Baker Family Trust v Lenard’s Pty Ltd (No 2) [2004] FCA 1310 (“Silver Fox”) at [22] and [25]. With respect to fresh evidence, Muirhead J held in Murray v Figge 4 ALR 612 that fresh evidence should be admitted only when:(a)it is so material that the interests of justice require it;(b)the evidence if believed would most probably affect the result;(c)the evidence could not by reasonable diligence have been discovered before;(d)inadvertence was established; and(e)no prejudice was suffered by the other party by reason of its introduction at a late point of time. To that list can be added:·it is necessary that the evidence sought to be adduced is relevant within the meaning of s 56 Evidence Act 1995 (Cth) and is of probative value (cf Australian Securities and Investments Commission v Rich [2006] NSWSC 826 at [18]); and·the court must be conscious of the principle of finality of litigation in deciding whether to exercise discretion to allow evidence after the conclusion of the trial (Bradshaw [2006] FCA 22 at [25]).Submissions of the respondents

Decision

Reasons for decision

COLLIER J

Full text does not contain this section.

Ratio Decidendi

Legal Principle Established

Established by: COLLIER J

The submissions of the applicant in relation to the notice of motion may be summarised as follows:·Although the respondents allege that the application falls within the class of “fresh evidence”, this is not a case of the respondents learning of fresh evidence relevant to the issues, where the evidence was not available at an earlier date.·In reality, the new evidence relates to steps taken by the respondents in an attempt to avoid allegations of trade mark infringement, in particular as relates to software and distribution of software. These have always been relevant issues in these proceedings.·It was always open to the respondents to take the steps outlined in the 9 April affidavit, however they chose not to and chose to run the case on the basis that their existing conduct did not infringe because they were not using the trade mark in relation to goods and services covered by the registration.·If the evidence in the 9 April affidavit is relevant it is relevant to an undertaking given during the trial. The obvious reason the undertaking was given was that the respondents realised during the trial that their case might not be strong in relation to the first respondent’s denial that it used the trade mark in relation to software and distribution of software.·If the Court were to find for the applicant in the primary proceedings, the applicant would be entitled to an injunction notwithstanding the provision of an inadequate undertaking. Whether the conduct of the first respondent in using “bing” in relation to, for example, software and the distribution of software has ceased will need to be the subject of further investigation through discovery, cross-examination and possibly further evidence.·The applicant would be prejudiced by the admission of further evidence occasioned by the delay in the conclusion of the matter and the further costs associated with the reopening of the trial.·No explanation is offered by the respondents for why the undertaking which is the subject of the so-called further evidence was not made at an earlier date.Consideration In this case it is clear that the additional evidence the respondents wish to tender in the 9 April affidavit supplements the undertaking and the evidence in the 12 March 2008 affidavit of Mr Cranitch. It is fresh evidence, in the sense that it is evidence that was not in existence at the time of the trial, however the reasons that this fresh evidence has come into existence are:·because of the effluxion of time since the trial concluded; and·the apparent fulfilment of the steps anticipated by Mr Cranitch in his 12 March 2008 affidavit in compliance with the undertaking given in Court on 11 March 2008. The applicant has submitted that it would be prejudiced by the admission of further evidence occasioned by the delay in the conclusion of the matter and the further costs associated with the reopening of the trial. The applicant has also submitted that if the 9 April affidavit were admitted it would require at the very least that further discovery be undertaken by the first respondent, cross-examination of Mr Cranitch, leave to amend its pleadings and leave to lead further evidence. I agree with the respondents that the applicant’s approach is curious in light of the lack of objection to Mr Cranitch’s earlier affidavit of 12 March 2008, which was similar to the 9 April affidavit in that it was also in support of the undertaking and also set out steps taken by the first respondent in compliance with that undertaking. I consider that the applicant has not substantiated its need for the additional steps it has claimed would be necessary, nor how any prejudice it would suffer from the admission of this evidence could not be compensated by a costs order.