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

• Jurisdiction: Australia Federal only
• Court: Federal Court
• Judgment Date: 25 November 2008
• Neutral Citation: [2008] FCA 1760

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 Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 cited

Johnson & Johnson v Kalnin (1993) 114 ALR 215 cited

Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 cited

King v Milpurrurru (1996) 66 FCR 474 cited

Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160 cited

Mark Foys Pty Ltd v TVSN (Pacific) (2000) 104 FCR 61 cited

Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 cited

Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54 cited

Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 cited

Microsoft Corporation v Tyn Electronics Pty Ltd (in liq) (2005) 63 IPR 137 cited

MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 distinguished

Moorgate Tobacco Co Ltd v Philip Morris Ltd (1984) 156 CLR 414 cited

Munday v Carey (1905) 22 RPC 273 cited

NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 cited

Oggi Advertising Ltd v McKenzie (1998) 44 IPR 661 distinguished

Paramount Pictures Corporation v Hasluck (2006) 70 IPR 293 followed

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Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) FCA 1228 cited

Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 cited

Re Spillers Ltd’s Trade Mark Application (1953) 70 RPC 51 cited

Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74 distinguished

SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1 distinguished

Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 cited

Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42 cited

Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354 cited

The Sanitas Company Ltd v Condy (1887) 4 RPC 530 cited

The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407 followed

Wal-Mart Stores Inc v Cadbury Schweppes Pty Ltd (2004) 61 IPR 596 cited

Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 121 ALR 191 cited

Winkle & Co Ltd v Gent & Son (1914) 31 RPC 473 cited

Yeatman v L Homberger & Co (1912) 29 RPC 645 cited

Yorke v Lucas (1985) 158 CLR 661 followed

10th Cantanae Pty Ltd v Shosana Pty Ltd (1987) 79 ALR 299 cited

Davison M, Monotti A, Wiseman L, Australian Intellectual Property Law (Cambridge University Press, 2008)

Davison M, Johnston K, Kennedy P, Shanahan’s Australian Law of Trade Marks & Passing Off (4th ed, Lawbook Co, 2008)

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:

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: 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 Before me is an amended application filed on 20 November 2007. The applicant, BING! Software Pty Ltd ACN 079 281 197, claims:

· trade mark infringement;

· misleading or deceptive conduct pursuant to sections 52 and 53 Trade Practices Act 1974 (Cth) (“TPA”); and

· passing off.

2 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

3 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.

4 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:

5 So far as is relevant in these proceedings the Bing trade mark is registered in respect of the following goods and services:

Class 9

Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector;

Class 35

Distribution and sales of computer software.

Class 42

Design 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…

6 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.

7 The applicant maintains a website www.bing.com.au 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.

8 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...