Collier J
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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 re Conagra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 cited 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
25 NOVEMBER 2008 BRISBANE
IN THE FEDERAL COURT OF AUSTRALIA
QUD 234 of 2007 BETWEEN:
BING! SOFTWARE PTY LTD ACN 078 281 197 Applicant AND:
First Respondent
Second Respondent JUDGE:
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
QUD 234 of 2007 BETWEEN:
BING! SOFTWARE PTY LTD ACN 078 281 197 Applicant AND:
First Respondent
Second Respondent JUDGE:
DATE:
25 NOVEMBER 2008 PLACE: BRISBANE
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.
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".
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 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…
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 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.
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.
The first respondent purchased the domain name www.bing.com for $US25,000 and had purchased the domain names www.easymail.com and www.easymail.com.au from third parties. The first respondent has also registered the domain name www.easypost.com.au. In relation to the use of hardware and software, Mr Cranitch deposed:
· the client creates the relevant letter;
· the first respondent provides a print driver called "mail room";
· the driver is not sold, rather it is provided as a means to access the service;
· most of the first respondent's clients use an older version of the print driver called EasyMail.
The following logo appears prominently on the first respondent's website and on its products:
The first respondent also uses the word "bing" in a variety of guises, including:
· without a red arrow above the letter "i";
· in a black rectangular box without the words "postal mail internet speed"; and
· in the following forms: Bing and bing.
These logos are set out later in the judgment.
On 6 February 2007 the first respondent lodged an application for the trade mark "Bing" for classes 9, 16, 38 and 39, described as follows:
Class 9 – electronic mail handling apparatus; electronic mail installations; electronic mail servers; electronic mail terminals; electronic mailing machines; stamping mail (apparatus to check).
Class 16 – machines for office use for moistening mail; machines for office use for opening mail; machines for office use for signing mail; machines for office use for stamping mail; machines for office use for wrapping mail; machines for office use in addressing mail; machines for office use in cancelling mail; machines for office use in closing mail; machines for office use in endorsing (franking) mail; mail inserting machines for office use; mail order catalogue; mailers (office machines); mailing labels; printed sheets of paper for mailing purposes.
Class 38 – data transmission by electronic mail; electronic mail; provision of electronic mail facilities.
Class 39 – forwarding of mail; franking of mail; mail forwarding.
On 5 September 2007 the applicant lodged opposition to the granting of the trade mark registration to the first respondent.
During the course of the hearing Mr Crowe SC for the respondents informed the court that he had received instructions from the first respondent to offer an undertaking to the court that the first respondent in relation to all references to the software the subject of the proceedings would not use the word "bing" when directly referring to that software in any documentation, on websites, or otherwise. Mr Crowe SC explained that the first respondent was not offering to change its name, but offered an undertaking that it would not refer to the software itself as "bing" nor any other combination of words using the word "bing" (TS 86 ll 18-25). I will consider this undertaking in more detail later in this judgment.
CLAIM OF THE APPLICANT
In the amended application filed 20 November 2007 the applicant sought the following orders:
1. A declaration that the conduct of the first respondent in 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:
(a) infringes the applicant's registered Trade Mark numbered 836622 BING! ("the Bing Trade Mark");
(b) constitutes misleading and deceptive conduct or conduct which is likely to mislead and deceive in contravention of sections 52 and/or 53 of the Trade Practices Act 1974;
(c) constitutes a wrongful passing off by the first respondent of its goods or services for the goods or services supplied by the applicant.
2. An order permanently restraining the first respondent, whether by itself, its servants, officers or agents from using within Australian the sign BING or any sign which is deceptively similar to the Bing Trade Mark as a sign in connection with the distribution, sale and supply of software.
3. An order that the respondents deliver up to the applicant for destruction all marketing material in their possession or under their power or control in connection with the advertising and/or supply of the software which material uses or contains the Bing Trade Mark or any mark deceptively similar thereto and, to the extent that such material is stored in electronic form, that such material be permanently deleted and the respondent verify such delivery up or deletion by affidavit.
4. An order that the first respondent forthwith change its corporate name to a name not incorporating the word Bing or any word deceptively similar thereto.
5. An order that the first respondent transfer the registration of the domain name www.bing.com to the applicant. 6. Damages:
(a) for infringement of the Bing Trade Mark;
(b) for passing off;
(c) pursuant to section 82 of the TPA.
7. Further or other orders under section 87 of the TPA.
8. Further and/or in the alternative to the relief sought in paragraph 6 above, at the option of the applicant, an account of profits made by the respondent by the said trade mark infringements and passing off and payment of the amount found to be due on the taking of such account.
9. Interest under section 51A of the Federal Court Act 1976.
10. Costs.
11. Such further or other orders as the Court thinks fit.
In the Amended Statement of Claim filed 20 November 2007, the applicant pleaded in summary that:
1. both respondents had infringed the Bing Trade Mark.
2. The applicant had not authorised either respondent to use the Bing Trade Mark or any sign or signs which were deceptively similar thereto in connection with the distribution, sale or supply of software.
3. The first respondent had infringed the Bing Trade Mark in that it had:
o within Australia, distributed, sold and supplied software;
o since 2004, promoted, marketed, distributed and supplied software to businesses in Australia;
o used the Bing Trade Mark or a sign which was substantially identical or deceptively similar thereto in connection with its business;
o filed trade mark application 1189460 for Bing in classes 9, 16, 38 and 39;
o on 8 March 2007 changed its name from EasyPost Australia Pty Ltd to Bing Technologies Pty Ltd, and has changed the name of the office mail system from EasyPost to Bing;
o since March 2007 marketed and promoted the office mail system using material which prominently featured the word Bing as a sign, and identified the office mail as Bing on service agreements with customers.
4. The conduct of the first respondent in infringing the Bing Trade Mark was, in summary, directed by Mr Cranitch.
5. By reason of, inter alia, the use by the applicant of Bing Trade Mark and the promotion of the trade mark in connection with its business as pleaded in the Amended Statement of Claim, the conduct of the first respondent had caused members of the public to believe that the first respondent's business was conducted by or under the authority of, or was connected in the course of trade or commerce with, the applicant or had the sponsorship or approval of the applicant, and the first respondent had therefore infringed the exclusive rights conferred by registration of the Bing Trade Mark.
6. By reason of, inter alia, the conduct of the first respondent in using the name "Bing" the first respondent had engaged in conduct in contravention of sections 52 and/or 53 TPA.
7. By reason of, inter alia, the conduct of the first respondent in using the name "Bing" the first respondent had passed off and/or threatened to pass off:
o its business as and for the applicant's business or as and for a business which is related to, authorised by, licensed by, approved or sponsored by or associated with the applicant;
o the products offered for sale, sold and supplied by the first respondent as and for part of the applicant's goods and services;
o the said products as and for products offered for sale, sold and supplied by or under the authority of the applicant; and/or
o the said products as being approved by and/or associated with the applicant.
8. The conduct of the first respondent had taken place at the direction of and with the authority of Mr Cranitch, had been carried out by Mr Cranitch, and was pursuant to a plan or design devised by Mr Cranitch.
9. The first respondent had made profits from its wrongful acts and conduct.
10. The applicant had requested the first respondent to cease such conduct but the first respondent had neglected, refused or failed to do so.
11. Mr Cranitch had aided, abetted, counselled or procured the conduct of the first respondent or had been knowingly concerned in or a party to the conduct of the first respondent, and was a person involved in the passing off and contraventions of the TPA.
12. The applicant had sustained loss and damage by reason of the conduct of the respondents and would, unless such acts and conduct were restrained, continue to suffer loss and damage. DEFENCE
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".
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:
to use the trade mark; and
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) ….
In the amended application the applicant pleaded s 120 of the Act. Section 120 sets out circumstances in which a trade mark is infringed. From the pleadings it appeared that the basis of the applicant's claims were potentially s 120(1) and (2) which provide:
(1) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.
(2) A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:
goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or
services that are closely related to registered goods; or
services of the same description as that of services (registered services) in respect of which the trade mark is registered; or
goods that are closely related to registered services.
However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.
...
During the course of the proceedings Mr Franklin SC for the applicant clarified that, in fact, the applicant was relying only on s 120(1) (TS 19-20).
In addition to its reliance on the Act, the applicant also claimed passing off, and conduct in breach of ss 52 and 53 TPA. Section 52 provides:
(1) A corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
(2) Nothing in the succeeding provisions of this Division shall be taken as limiting by implication the generality of subsection (1).
So far as relevant in these proceedings s 53 provides:
A corporation shall not, in trade or commerce, in connexion with the supply or possible supply of goods or services or in connexion with the promotion by any means of the supply or use of goods or services: …
(c) represent that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits they do not have;
(d) represent that the corporation has a sponsorship, approval or affiliation it does not have.
The validity of the applicant's trade mark is not in dispute, nor is there a dispute that the first respondent uses the word "bing" as a trade mark (albeit unregistered). It became clear both from submissions of the parties and the conduct of the case that the following issues required determination:
1. Whether the trade mark used by the first respondent – namely the word "bing" in various guises – was substantially identical to the applicant's trade mark.
2. Whether the trade mark used by the first respondent – namely the word "bing" in various guises – was deceptively similar to the applicant's trade mark.
3. Whether the goods or services in respect of which the first respondent uses the word "bing" in various guises were goods or services in respect of which the trade mark was registered.
4. Liability, if any, of Mr Cranitch for infringement, if any, of the applicant's trade mark.
5. Whether the conduct of the first respondent amounted to conduct in breach of s 52 or s 53 TPA.
6. Whether the conduct of the first respondent amounted to passing off.
7. Liability, if any, of Mr Cranitch in relation to conduct of the first respondent in breach of the TPA or conduct in the nature of constituted passing off, if any.
8. In the event that the applicant has substantiated its case or any part thereof – appropriate remedies.
In the context of the legislation I have set out above, I will now turn to each of these issues.
1. IS THE FIRST RESPONDENT'S USAGE OF "BING" SUCH THAT IT IS SUBSTANTIALLY IDENTICAL TO THE APPLICANT'S TRADE MARK?
Although in the amended statement of claim the applicant claimed that the first respondent's use of the word "bing" was substantially identical to the applicant's trade mark, the applicant in written submissions stated that it was content to rely on deceptive similarity although it "might" be arguable that the marks were substantially identical because the words were identical. To that extent, there appears to be some concession by the applicant that it cannot establish an infringement of its trade mark within the meaning of s 120(1) on the basis of substantial identity.
However the claim by the applicant as to substantial identity was not specifically abandoned. It is appropriate for me to consider this allegation.
In The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407, Windeyer J considered "substantial identity" in terms of trade marks. His Honour said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v Vick Chemical Co (1951) 68 RPC 103 at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v Cody (1945) 70 CLR 100 per Latham CJ…and Ex parte O'Sullivan; Re Craig (1944) SR (NSW) 291 per Jordan CJ, where the meaning of the expression was considered.
These principles are well settled and have been applied on numerous occasions by the Full Court of the Federal Court (for example, Starr Partners Pty Limited v Dev Prem Pty Ltd [2007] FCAFC 42; Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (2004) 209 ALR 1).
Further, it is clear that in considering whether the competing marks are substantially identical within s 120(1) of the Act a comparison must be undertaken of the registered trade mark and the whole of the respondent's mark, and not merely part of it: Angove's Pty Ltd v Johnson and Eclar Investments Pty Ltd (1981) 55 FLR 1 at 8.
As I noted earlier in this judgment, the applicant's registered trade mark is as follows:
The respondents use "bing" in a number of ways, including the following: and and
and Bing and bing
In considering the Bing Trade Mark and the respondents' varied uses of "bing" side by side, an obvious similarity is that the trade marks of both the applicant and the first respondent include the word "bing". It is also not in dispute that both parties pronounce the word "bing" in the same way, which is relevant in considering the similarity or otherwise of the marks (Gummow J in Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 121 ALR 191 at 229).
The fact that both marks include the same word does not conclusively mean that the marks are "substantially identical": Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160; Angove's Pty Ltd v Johnson (1983) 66 FLR 216. Indeed, the fact that the Bing Trade Mark is written in capital letters, and the first respondent's mark is not, suggests that the two marks are not substantially identical: SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1 at 11.
In considering the competing marks side by side a number of important differences are apparent:
(a) the applicant's trade mark is in upper case whereas the first respondent's use of the word "bing" is lower case;
(b) the applicant's trade mark utilises an exclamation mark whereas the first respondent's mark does not;
(c) the applicant's trade mark is in the form of a logo utilising an oval shape in which the word and following exclamation mark "BING!" appear, whereas the first respondent's mark, even without the words "POSTAL MAIL INTERNET SPEED", appears different and does not, for example, utilise any such oval background;
(d) the first respondent's mark frequently utilises a red arrow above the letter "i" whereas the applicant's trade mark does not;
(e) the first respondent's mark is often used in conjunction with the words "POSTAL MAIL INTERNET SPEED" whereas the applicant's trade mark is not.
In my view, notwithstanding that both marks include the word "bing", the two marks are not "substantially identical" for the purposes of s 120(1) of the Act.
2. IS THE FIRST RESPONDENT'S USAGE OF "BING" SUCH THAT IT IS DECEPTIVELY SIMILAR TO THE APPLICANT'S TRADE MARK?
Section 10 of the Act provides:
For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The concept of "deceptive similarity" in the context of trade marks was described by Windeyer J in Shell 109 CLR 407 at 415 as follows:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him… It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v Vick Chemical Co at 106. And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 Dixon and McTiernan JJ said "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (at 658)…(at 416). The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
Further, it is clear that:
· The concept in s 10 of the allegedly infringing trade mark being "likely" to deceive or cause confusion does not import a requirement that it be more probable than not that the mark has that effect. The probability of deception or confusion must be finite and non-trivial. There must be a "real tangible danger of its occurring": Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 380.
· A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt: Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-595; Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365 at 382.
· Deceptive similarity must be judged by the standards of "ordinary" people keeping in mind the likelihood that they may have only an imperfect recollection of the registered mark: Johnson & Johnson v Kalnin (1993) 114 ALR 215 at 220.
· Deceptiveness flows not only from the degree of similarity itself between the marks, but also from the effect of that similarity considered in relation to the circumstances of the goods, the prospective purchasers and the market covered by the monopoly attached to the registered trade mark: NSW Dairy Corporation v Murray Goulburn Co-Operative Company Ltd (1989) 14 IPR 26 at 67, cf Windeyer J in Shell 109 CLR 407 at 416.
The evidence demonstrates that the businesses of the parties are completely different, that the parties have no customers in common and that they operate in completely different markets. These factors militate against a finding of deceptive similarity of the trade marks. However on balance, I consider that the first respondent's usage of "bing" in its different forms is such that it is deceptively similar to the applicant's trade mark within the meaning of s 10 and s 120(1) of the Act. I form this view for the following reasons:
· Notwithstanding that the respective trade marks of the applicant and the first respondent are different visually, as I have already observed the marks of both the applicant and the first respondent feature the word "bing" and the spelling and pronunciation of "bing" as used by both applicant and first respondent are identical. As Mr Franklin submitted – "bing" is "bing".
· Although the trade marks are used in respect of different services – an issue to which I shall shortly return – a customer using either the applicant's products or the first respondent's internet postal service does so by using a computer. Indeed the first respondent's advertisement in the December 2007 edition of the Virgin Blue in-flight magazine, which was the subject of evidence given by Mr Paul Kenna, depicts an Australia Post mail box linked by a computer cord to a computer and monitor, with the first respondent's trade mark displayed on the monitor. In this respect I consider that the average consumer with ordinary intelligence with an imperfect recollection of the applicant's trade mark, seeing or hearing the first respondent's mark, might be caused to wonder whether goods or services supplied pursuant to the first respondent's mark might be sourced from the applicant. Indeed this was the substance of evidence given by Mr Paul Kenna.
· There is evidence of actual confusion in relation to the Bing Trade Mark and the first respondent's trade marks from:
o evidence of Mr James Helm in relation to individuals whom he deposed contacted the applicant in the mistaken belief that they were contacting the first respondent (affidavits of James Helm sworn 1 November 2007, 8 November 2007 and 10 January 2008); and
o as I have already noted, evidence of Mr Paul Kenna, a Victorian solicitor. Mr Kenna deposed that he had been aware of the applicant's products because he had previously contacted it in relation to its conveyancing software, and that he had assumed an advertisement in the December 2007 edition of the Virgin Blue in-flight magazine placed by the first respondent related to the applicant's products (affidavit of Paul Kenna sworn 12 December 2007). In my view whether Mr Kenna first contacted the applicant or the first respondent in relation to this confusion is irrelevant and does not materially detract from the substance of Mr Kenna's evidence. I accept the submission of the applicant that Mr Kenna knew of the applicant because of its conveyancing software and, that, upon seeing the advertisement with the trade mark "bing", Mr Kenna thought that the "mailing software" emanated from the applicant. While the authorities indicate that evidence of actual confusion such as the evidence of Mr Kenna does not conclusively establish that the first respondent's trade mark is deceptively similar to the applicant's registered trade mark, nonetheless evidence of actual confusion may be of considerable importance (Davison M, Johnston J & Kennedy P, Shanahan's Australian Law of Trade Marks & Passing Off (4th ed, Lawbook Co, 2008) at [30.2510] and cases cited therein).
· On balance, expert evidence of Associate Professor Alpert supports a finding that the marks are deceptively similar. Although Associate Professor Alpert gave evidence that the respective brands of the applicant and the first respondent, as depicted on their websites, appeared different (TS 138 ll 1-4), he also expressed the opinions that:
o if a potential customer only saw the word "bing", it could lead the customer to wonder if it was related to the applicant (TS 139 ll 29-31);
o a consumer who knew the BING! Software brand could be caused to wonder whether "bing" "in lower case" came from the same source (TS 139 ll 38-44);
o the word "bing" was prominent in the respective brands of the applicant and first respondent (TS 140 ll 28-47);
o a person who has an imperfect recollection of the Bing trade mark in relation to any software would be likely to be confused when they saw "bing" on the computer screen in relation to the first respondent's software (TS 142-143);
o an IT person, who had never seen the first respondent's website and its branding, but who knew of the applicant, might be confused on seeing the first respondent's software as displayed on a computer screen (TS 144 ll 7-10);
o on seeing the advertisement in the Virgin Blue magazine with the single word "bing", a person with knowledge of the BING! Software might be confused into thinking that BING! Software had branched into a different product range (TS 151 ll 37-42);
o consumers would experience both "purchase confusion" and "initial consideration confusion" in relation to the respective marks of the applicant and first respondent (TS 153 ll 9-24).
Notwithstanding this deceptive similarity however, the respondents will only have breached the Act if the goods or services in respect of which the first respondent uses the word "bing" in various guises are of the same description in respect of which the trade mark is registered.
3. ARE THE GOODS OR SERVICES, IN RESPECT OF WHICH THE FIRST RESPONDENT USES THE WORD "BING", GOODS OR SERVICES IN RESPECT OF WHICH THE TRADE MARK IS REGISTERED?
As I noted earlier in this judgment, the applicant's 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…
The first respondent has sought to register its trade mark in respect of goods and services other than those listed, however this is obviously not conclusive in the context of the applicant's claim (cf Southern Cross Refrigerating Co v Toowoomba Foundry Proprietary Ltd (1954) 91 CLR 592 at 606).
Submissions of the parties
Submissions of the applicant in relation to this issue may be summarised as follows:
· The first respondent's use of the word "bing" is in relation to goods or services covered by the registration of the applicant's trade mark. Further, there is ample evidence that the respondents distribute computer software, and that in conducting its business the first respondent distributes and installs on each of its customer's computers the bing software that is necessary to operate the system.
· The first respondent's promotional material uses the trade mark "bing" in relation to its software, and through installation and use of the software, the trade mark "bing" appears on the computer screen in various guises. It is clear from the respondents' own evidence that the first respondent uses the mark "bing" in relation to at least software (class 9); distribution of computer software (class 35), and updating of computer software (class 42).
· The software distributed by the first respondent has a number of components including "bing Client", "bing Virtual Printer Driver", "Popup bing Mailroom", "Control bing Printer", and "bing Help".
· Customers of the first respondent enter a software license agreement in respect of the software (and updates) provided to the customer by the first respondent under the name "bing". Further, the software licence agreements refer frequently therein to "bing".
· The comparison is between the applicant's registered mark normally used in relation to any goods or services for which it is registered, including software, the distribution of software, software development, maintenance and upgrades, and the first respondent's actual use. The first respondent's use of "bing" in the course of conducting a business that involves the distribution of software to customers and the entering into of software licence agreements in relation to the Bing software so distributed, confirms or exacerbates that confusion.
· The first respondent uses "bing" in various guises as a trade mark in relation to goods and services.
· It is clear that the first respondent's service is a "software enabled" service, and is used in relation to goods or services for which the trade mark is registered, including "software" and "distribution of software".
· How the applicant uses its trade mark, and whether there is any likelihood of deception or confusion because the applicant sells primarily legal software and the first respondent provides postal services, are irrelevant considerations because the applicant has exclusive rights to the trade mark under s 120(1) of the Act.
· Notwithstanding submissions of the respondents in relation to s 120(2) the proviso to s 120(2) does not apply where the first respondent's use is in relation to goods and services covered by the registration. Legal principles in relation to goods and services of the same description are irrelevant to this case. The question whether the parties operate in different market segments is irrelevant if the specification of goods and services in the registration is sufficiently wide to encompass the respondent's actual use.
· The first respondent does not have to "sell" a product to use a trade mark in respect of goods and services covered by the registration.
In reply, the respondents submitted in summary:
· The applicant fixes upon the fact that the first respondent provides, as part of its postal service, software to customers. To accept the applicant's case would be to accept that it has a monopoly in the use of the name "bing" as a trade mark in respect of any service which provides software even though the provision of that software is ancillary to the actual service acquired by customers. This approach has been rejected by the courts.
· Although the first respondent is actually engaged in the provision of postal services, the applicant is trying to elevate those services to that of provision of computer software, relying upon the incidental use of that software in the conduct of the first respondent's business. That is an incorrect approach and contrary to binding authority on this court.
· This case is very similar to that in SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1.
· The applicant is trying to distract the court by the fact that the services or goods offered by the parties might have some features in common. The court should not be distracted by the fact that, in part, the services or goods provided by the first respondent involves the provision of software to its customers.
· In any event, on the morning of the second day of the trial the first respondent provided an open undertaking to the Court that it would not use the word "bing" either by itself or in combination with any other words in directly referring to the software it provides to its customers.
Goods or services in respect of which the trade mark was registered: relevant principles
The inquiry in s 120(1) as to whether use of a trade mark concerns goods or services in respect of which a trade mark is registered is simple, involving a comparison between the registered mark used notionally, fairly and normally in respect of any goods and services, with the alleged infringer's actual use. Resolution of the inquiry is a question of fact: Re Spillers Ltd's Trade Mark Application (1953) 70 RPC 51; cf Wal-Mart Stores Inc v Cadbury Schweppes Pty Ltd (2004) 61 IPR 596.
The essence of the applicant's case in relation to whether the first respondent's goods and services are those in respect of which its trade mark is registered, is that:
· its trade mark is registered in relation to both software and services relevant to software;
· the first respondent's infringement occurs where the word "bing" is used directly on software (for example, "bing Client"), in combination with the word "software" (for example in the agreements) or on the website in direct relation to software (for example "bing Professional"); and
· the activities of the first respondent include goods in respect of which the applicant's trade mark is registered (software) and services (for example updating software).
Leaving to one side for the moment the undertaking given by the first respondent, the essence of the respondents' case is that the first respondent conducts an internet postal service for which the use of software is but incidental. I shall return to discuss the first respondent's undertaking later in the judgment.
The respondents cite in support of their case MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 and SAP Australia 169 ALR 1, both of which are authorities for the proposition that, when comparing services, one should focus primarily on a comparison of the totality of the two services rather than the individual aspects of those services (cf comments in Davison M, Monotti A and Wiseman L, Australian Intellectual Property Law (Cambridge University Press, 2008) p 105). This contention is superficially attractive, however in my view falters on closer examination.
In this case it is clear from the affidavit of Mr Theodosiou, the sole director of the applicant, sworn 1 November 2007 (para 13) that the applicant conducts a "software business" which exhibits characteristics including:
· the applicant's "goods" are, in substance, software packages which generate Family Court forms and conveyancing forms;
· the applicant produces licence agreements, user guides and marketing material relating to the legal software packages upon which the applicant's trade mark appears;
· the trade mark is also registered in respect of services provided by the applicant, including the distribution and updating of software it provides customers.
This can be contrasted with the first respondent's service. I agree with the respondents that the first respondent is engaged in the provision of internet postal services, which prima facie are not goods or services in respect of which the applicant's trade mark is registered. However I consider it is also clear that, as Mr Franklin submitted, the first respondent's service is, in the manner in which it is conducted with the majority of its clients, a software-enabled service. While customers can access the first respondent's service without specific software (an issue to which I will return later in the judgment), the first respondent provides software, bearing the trade mark "bing", to customers to allow the customers to effect the internet postal service it provides, and to access that service. I consider that this observation applies equally to:
· activities of the first respondent in assisting customers install software and deal with problems with software; and
· service updates provided by the first respondent.
Indeed, as the evidence demonstrates, the first respondent entered detailed software licence agreements with its customers in relation to software called "bing" software. To that extent the software is considerably more than "incidental" to the operation of the first respondent's service. It is an important aspect of the service which allows its operation.
In considering the principles articulated in MID Sydney 90 FCR 236 and SAP Australia 169 ALR 1 I am of the view that the facts of the case before me do not support an application of those principles.
In MID Sydney 90 FCR 236 (so far as material in the present case) the appellant was the registered proprietor of the trade mark "The Chifley Tower", registered for services in class 36 described as "leasing of office and retail space; building and property management". The respondents proposed to use the word "Chifley" in relation to hotel-related services. The Full Court accepted that the hotel business entailed "management" of hotel properties. However the Court did not accept that hotel-related services therefore were "property management" services within the meaning of class 36. As the Court observed:
The conduct of an hotel business includes the accommodation of guests, the operation of restaurants and bars (including compliance with the liquor licensing law) and the provision of conference and business facilities and of other services normally offered by hoteliers. These activities cannot ordinarily be described as "property management services". To elaborate on what might be thought an obvious proposition about the ordinary use of language is often not profitable. But the ordinary meaning of property management services - and this is supported by Mr Garnett's evidence about his own business activities - would not encompass the occupation of a property under contract with, or licence or lease from, its owner or lessee in order to manage a business, for the benefit of both the manager and the owner or lessee, conducted on that property. (at 242)
Later their Honours continued:
It was suggested that, if a manager provided services falling within the description "property management services", those services did not lose that character because they formed part of an overall business having features other than the provision of property management services. Certainly it is true that a provider of property management services is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. (at 242-243)
So far as concerns the software provided by the first respondent to its customers bearing the moniker "bing", in my view that software is a "good" which is both severable from the internet postal service, and would in other circumstances be capable of being the subject of a registered trade mark in its own right within Class 9. Similarly, distributing and updating that software are "services" within classes 35 and 42. The software supplied by the first respondent, and the services provided by the first respondent in support thereof, are not, to draw an analogy with MID Sydney 90 FCR 236, goods or services which lose their features as software because they form part of an overall broader service. The software remains software, which requires distribution and updating, no matter that it is used in connection with the first respondent's internet postal service.
The respondents also submitted that the facts of this case parallel those in SAP Australia 169 ALR 1. In SAP Australia 169 ALR 1 the first appellant, a subsidiary of a German company (the second appellant), had traded in Australia since 1989, and distributed computer software products of the second appellant in Australia. The first appellant had also established a training college under the name "Sapient College". The second appellant had registered in Australia the trade marks SAP and SAPIENT COLLEGE in respect of Class 41:
Education; providing of training; cultural activities; the foregoing including post graduate, further and advanced education and training in business, business management, management, business administration, computers, computer peripherals and computer software, information technology, intellectual property, telecommunications, science and technology, medical technology and science, technology management, stress management and therapy, personal development, lifestyle, relaxation and remedial techniques.
The respondent was incorporated in Australia in 1998 and provided custom-designed computer systems for clients and some ancillary training. The appellants alleged infringement by the respondent of the registered trade marks, misleading or deceptive conduct in contravention of s 52 TPA, and passing off. The action at first instance was dismissed.
In dismissing the appeal before it the Full Court observed that there was some force in the respondent's contention that the trial judge erred, favourably to the appellants, in finding that the respondent's use of "Sapient" was in relation to the same services as the services in respect of which the second appellant's trade mark was registered. Their Honours continued:
While Sapient Australia provides instruction to its customers on how to use the software solutions it has specifically designed and implemented for them, the provision of that instruction is no more than an incident to the provision of the more broadly based consulting service. Sapient Australia is simply not engaged in the general activity of providing education and training in computer software. Its trade is quite different: see MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 at 565-8. In the light of the conclusion we have reached it is not necessary to consider whether we should depart from his Honour's finding on this point… (at 11) (emphasis added)
Where the analogy between these proceedings and SAP Australia 169 ALR 1 breaks down is that while the Full Court accepted in SAP Australia that "broadly based consulting services" could include supplementary training as an adjunct to the provision of custom designed computer systems for clients, in this case it does not follow that software provided by the first respondent is no more than an incident to the provision of its service. As I noted earlier, the software used by the first respondent is a product in its own right – the copyright therein is owned by a third party, and the first respondent has exclusive distribution rights (TS 66 ll 12-13). The first respondent provides the software even though, as Mr Cranitch conceded during cross-examination, the first respondent has some clients who do not use the software, but send to the first respondent documents in the form of PDF files, word documents and publisher documents (TS 71 ll 40-41). The software and associated services are an important part of the first respondent's internet postal service.
In ascertaining whether software is "incidental" to its internet postal service as submitted by the first respondent, it is useful to test the first respondent's hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was "incidental" to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd [2005] FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54).
Software is pervasive in twenty-first century Australia. In the words of one writer:
In case you have not noticed, software is now a key part of our social structure — we sense it in our cars, in our supermarkets, in our televisions, in our computers — we sense it everywhere; it is a ubiquitous, undulating, architectural, air like, water like commodity that infiltrates our daily lives. (Brian Fitzgerald, "Software as discourse?: A constitutionalism for information society (1999) AltLJ 25)
However its omnipresence does not, in itself, mean that it fulfils an incidental role in relation to functionalities such as the service provided by the first respondent. Further, the fact that the software used by the first respondent is not sold by the first respondent, or indeed that it has no operation other than in relation to the first respondent's service, does not mean that it is not "software" for the purposes of classes 9, 35 and 42 for which the applicant has a statutory monopoly.
Accordingly, and putting aside for the moment the undertaking given by the first respondent (to which I will return later in this judgment), in my view the software provided by the first respondent and services in respect of distributing and updating that software, are goods and services in respect of which the applicant's trade mark is registered. Accordingly, I find that the first respondent has infringed the applicant's trade mark.
4. LIABILITY, IF ANY, OF MR CRANITCH FOR INFRINGEMENT, IF ANY, OF THE APPLICANT'S TRADE MARK
In considering the liability of a director of a company for conduct of the company which has infringed the intellectual property rights of a third party, Lindgren J in Microsoft Corporation v Auschina Polaris Pty Ltd (1996) 71 FCR 231 explained:
The "procured or directed" test, sometimes referred to as the "authorised, procured or directed" test, focuses attention on the relationship between the director's intention and the particular corporate conduct which the law characterises as tortious. What seems to underlie this test is the notion that, necessarily, companies can engage in tortious conduct only through human beings, and, at least ordinarily, where a particular human being involved and responsible to an appropriate extent can be identified, he should, as a matter of policy, be liable… (at 243-244)
In my view it is clear on the evidence that:
· Mr Cranitch is the managing director and chief executive officer of the first respondent, and is in effective control of the first respondent;
· Mr Cranitch did the relevant background searches prior to the first respondent using the word "bing" in relation to its services (Cranitch affidavit paras 47-55);
· the decision to use "bing" in relation to the services of the first respondent was made by Mr Cranitch (Cranitch affidavit paras 42-46).
In claiming that damages "at large" should be awarded the applicant relied in part on the decision of Jessup J in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74. However:
· I consider that Review Australia [2008] FCA 74 is distinguishable from this case. In Review Australia Jessup J accepted that the market presence of the respondents' product did bring about some minor dilution of the applicant's reputation for originality (at [30]). In my view there is some evidence of minor and short-lived confusion of a small number of consumers, but no evidence that there has been any dilution of the applicant's reputation in any respect by the market presence of the first respondent. There is, for example, no evidence (unlike in Review Australia) that any value placed by the applicant on its goods and services has been diminished by the activities of the respondents. I make this observation particularly in light of the completely different activities of the parties and the markets in which they operate.
· In the absence of demonstration by the applicant of any damage, the principles articulated by the Full Court in Enzed Holdings 57 ALR 167 which I have outlined earlier in this judgment militate against an award of damages.
· Although the applicant relies on evidence of Associate Professor Alpert to the effect that, on the balance of probabilities, the use by the respondents of the mark "bing" has caused a diminution in the value of the applicant's trade mark, I accord the witness' evidence no weight in relation to this issue because:
o I am not satisfied that Associate Professor Alpert is an expert on valuation of trademarks or intellectual property law. Associate Professor Alpert's expert report dated 21 December 2007 concerned an overview of key issues from a marketing/branding/consumer behaviour perspective, which area appears to be his area of expertise (Introduction para (c) to report);
o considering the witness' expert report and the contents thereof, I draw the inference that, prior to the hearing, he had not directed his mind to the question of monetary valuation of the trade mark in question. Indeed in referring to "brand values" in his report, Associate Professor Alpert appeared to equate the term with brand aspects rather than any financial concept (note, for example, TS 137 ll 34-44, TS 138 ll 1-4);
o Associate Professor Alpert's evidence in relation to possible diminution in the value of the applicant's trade mark was theoretical, highly qualified, and not particularly helpful. I refer in particular to:
▪ the fact that, in response to a question from Mr Franklin SC as to whether the witness had any experience in assessing the value of the trade mark, the witness replied:
Not quantitatively, but in what we teach, marketing branding is essential, and we stress the value of the brand. (TS 132 ll 4-6)
▪ the witness merely agreed that he was able to give the Court "opinions as to the general proposition that a brand is a valuable asset" (TS 132 ll 8-10) and that "these situations can be complex" (TS 132 ll 13-15);
▪ in response to a question from Mr Franklin SC as to whether Associate Professor Alpert was able to give the Court expert advice on possible causes of diminution and the value of brand, the witness replied: "I'd like to think so, yes" (TS 132 ll 18);
▪ the witness merely agreed that, assuming that one has a valuable brand that is protected by a registered trademark or a de facto monopoly, one of the reasons that that value might diminish is if someone uses the same or a similar brand in the same market (TS 132 ll 30-33).
In noting this evidence I intend no criticism of the witness who was endeavouring to be of assistance. However, in my view, the evidence raises not only serious questions as to the witness' expertise in relation to the issue of value of the relevant brand, but also serious doubts as to its probity.
Accordingly, I consider that I should make no order as to compensatory damages or damages "at large".
It would be appropriate for the parties to file written submissions as to the form the final injunction should take based upon the undertaking given by the first respondent in Court. Accordingly, at this stage the proper order is that the parties be directed to file written submissions by 4.00 pm on 28 November 2008 as to the form of the final injunctive relief based upon my reasons in this judgment, and costs, and that the matter be listed to return next week for final orders to be made.
I certify that the preceding one hundred and twenty-seven (127) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Collier. Associate:
Cases that have considered Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1)
Judicial Consideration (Chronological)