Bing! Software Pty Ltd v Bing Technologies Pty Limited

REASONS FOR JUDGMENT 1 On 25 November 2008 I gave judgment in the primary proceedings in this matter (Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760) and also in relation to a notice of motion filed 16 May 2008 (Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 2) [2008] FCA 1761). In summary, I found that the conduct of the first and second respondents had infringed the applicant's registered trade mark, but that the effect of compliance with an oral undertaking given by the first respondent during the hearing of the primary proceedings was that the infringement of the applicant's registered trade mark by the respondents ceased. Notwithstanding that undertaking however, I allowed the application in part because I considered that the applicant was entitled to an injunction based upon the oral undertaking. Upon giving judgment I directed the parties to make submissions as to the terms of the injunction in light of the reasons given in my judgment. I also directed that the parties make submissions as to costs. 2 On 3 December 2008 counsel for the parties made oral submissions, based upon their outlines of argument filed 28 November 2008.

Injunctive Relief 3 In written submissions the applicant submitted that, in accordance with s 7(4) and s 120(1) Trade Marks Act 1995 (Cth) ("the Act"), the injunction should read as follows: The Respondents are restrained by injunction from using as a trade mark a sign comprising the word bing, or any other sign that is deceptively similar to Trade Mark 836622, upon, or in physical or other relation to goods or services in respect of which the trade mark is registered. ("the applicant's preferred wording of the injunction") 4 The applicant submitted that the reasons for its preferred wording of the injunction were that: · The undertaking given in Court was vague. · The injunction should be based on the language of the Act. · The Court has found that the first respondent's marks were deceptively similar to the applicant's registered trade mark, and the order should acknowledge that fact. · For trade mark infringement under s 120(1) all that is relevantly required is that the use must be "in relation to" goods or services in respect of which the trade mark is registered. · It is clear from the evidence that bing was used on the website of the first respondent "in relation to" software, including by direct descriptions such as "bing Mailroom" as well as other references (for example "bing can handle any documents, even PDF's from any software platform…"). · There is no evidence that all of these references have ceased, and any order made must be worked to ensure it covers trade mark infringement in relation to use of the trade mark on the software, in specific and direct descriptions of the software, and "in relation to" the software. 5 The applicant submitted that, in the alternative and if the Court proposed to adopt the strict wording of the undertaking, the injunction should be worded as follows: 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!. ("the alternative wording of the injunction") 6 Although in written submissions the respondents had advanced proposed wording of an injunction, at the hearing it was clear that the respondents supported the alternative wording of the injunction submitted by the applicant. Mr Crowe SC submitted that the respondents were concerned about the terms of the applicant's preferred wording of the injunction because: · in my judgment I had made it clear that the first respondent was entitled to continue to call itself "Bing" provided that it complied with the undertaking as to references to software, and the alternative wording of the injunction reflected the undertaking; · should I make an order in terms of the applicant's preferred wording of the injunction, there is a risk that, in the future, a purchaser of the applicant's business could claim that the first respondent was using the trade mark "BING!" in relation to software, distribution of software, and updating software simply by the first respondent calling itself "bing". 7 In considering the form of the injunctive relief I give little weight to the possibility of a hypothetical purchaser of the applicant's business commencing litigation against the first respondent in ignorance of the reasons for judgment in Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760. However on balance, and after considering the submissions of the parties, I consider it appropriate to make an order in terms of the alternative wording of the injunction proposed by the applicant. I have formed this view because: · I found in Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760 that compliance by the first respondent with its undertaking meant a cessation of conduct infringing the applicant's trade mark, and that injunctive relief in terms of that undertaking was appropriate. In my view the alternative wording of the injunction more accurately reflects that undertaking than the applicant's preferred wording of the injunction. · The alternative wording of the injunction addresses the applicant's concerns with respect to such products as BING! mailroom. · In relation to the applicant's concerns relating to statements on the first respondent's website such as "bing can handle any documents, even PDF's from any software platform…", I do not consider that such a statement would breach either the first respondent's undertaking or the injunction I propose to make provided that it was clear that in doing so the first respondent was using the word "bing" to describe itself rather than software it supplies as part of its service. · I do not consider that it is necessary to make reference in the order to "or any other sign that is deceptively similar to Trade Mark 836622". As the applicant submitted, and as I found in my judgment, the applicant has an exclusive statutory monopoly to the trade mark "BING!" in relation to the goods and services in respect of which the trade mark is registered. The judgment dealt exclusively with the fact that the first respondent used the word "bing", and found that in doing so it had infringed the applicant's trade mark. Whether any other sign of the first respondent (or anyone else, for that matter) is "deceptively similar" to Trade Mark 836622 for the purposes of s 10 and s 120 of the Act would require a separate determination by the Court. · In relation to the applicant's concern that not all references by the first respondent to software as "bing" have ceased, in my view the applicant is in no stronger position as to enforcement of an injunction should the injunction be in the terms preferred by the applicant than if the injunction were to be crafted in the alternative wording proposed by the applicant. If conduct of the respondents breaches the injunction, appropriate remedies are available to the applicant. · While as a general proposition I accept that injunctive relief framed in the language of the Act is desirable, I do not consider that the applicant is in any way prejudiced by the drafting of the injunction in the alternative manner it proposes. 8 The respondents have also submitted that, to avoid the potential for any further dispute as to the width of the injunction, it could be accompanied by the following declarations: 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 no 836622. 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. 9 These declarations accord with my reasons for judgment and I accept the respondents' submission that they would avoid the potential for further dispute. Accordingly I consider it appropriate that these declarations also be made.