Bing! Software Pty Ltd v Bing Technologies Pty Limited

INTRODUCTION 1 By an interlocutory application filed on 24 April 2024, the first respondent seeks to set aside order 3 of the orders made in this matter on 10 December 2008 by Collier J (Order 3) in Bing! Software Pty Ltd v Bing Technologies Pty Ltd (No 3) [2008] FCA 1869 (Primary Judgment). Order 3 reads as follows: 3.In relation to all references to software in the course of the first respondent's business, the respondents are restrained by injunction: (a) from using the word "bing" when directly referring to software in any documentation, on websites, or otherwise; (b) from referring to software itself as "bing" or any other combination of words using the word "bing;" (c) where there is a reference to software from referring to it as "bing" software, or "bing" mailroom software or any other combination of words using the name "bing." 2 The first respondent also seeks an order the Court dispense with r 4.01(2) of the Federal Court Rules 2011 (Cth) in respect of the applicant. 3 The applicant appealed the Primary Judgment, which was allowed in part on 3 September 2009: Bing! Software v Bing Technologies (2009) 180 FCR 191; [2009] FCAFC 131. The Full Court varied Order 3 to afford the applicant more protection in respect of the use of the word 'bing' as follows: Order 3 of the orders made by the Honourable Justice Berna Collier on 10 December 2008 be varied by adding, after para c and as part of her Honour's orders, para d, to read as follows: d. from using the word "bing": (i) upon the first respondent's software; (ii) in the distribution, sales, or supply of the first respondent's software; (iii) in the upgrading and updating of the first respondent's software; (iv) in or on anything (whether in documentary, electronic, or other form) used in describing, promoting, marketing, or advertising the first respondent's software; and (v) in or on anything (whether in documentary, electronic, or other form) used in describing, promoting, marketing, or advertising the distribution, sales, upgrading or updating of the first respondent's software. 4 On 2 December 2020, the Bing! Trademark was removed from the Register of Trademarks due a failure to pay the renewal fee. 5 Mr Emmanuel Theodosiou, who is the sole director and shareholder of the applicant, informed the first respondent that the applicant is no longer trading, but continues to be a registered company. 6 In its written submissions, the first respondent provides the following reasons for its application to set aside Order 3: (a) Bing! Software no longer receives any practical benefit from order 3 of the Orders; (b) order 3 of the Orders has a permanent effect; (c) the absence of an expiry date in order 3 of the Orders creates an ongoing risk of inadvertent contempt by current and future employees of Bing Technologies; (d) Bing Technologies has and continues to fully comply with the Orders. 7 Mr Theodosiou has advised that he consents to the orders being made. 8 The second respondent is Mr Steven Cranitch, who was the managing director and CEO of the first respondent. As of 17 September 2009, he ceased involvement with the first respondent. He has also advised that he consents to the orders being made. 9 The first respondent sought that the orders be made in chambers. I am satisfied to make the orders as sought and provide the following reasons.

CONSIDERATION 10 Pursuant to rule 4.01(2) of the Rules, as the applicant is a corporation, it is not permitted to proceed without legal representation. Given that Mr Theodosiou is the sole director and shareholder of the company, which is no longer trading, I am satisfied that rule 4.01(2) should be dispensed with pursuant to r 1.34 of the Rules. 11 Pursuant to r 39.05(f) of the Rules, the Court may set aside an order after it has been entered if the party in whose favour it was made consents. 12 In Perre v Apand Pty Ltd (2004) FCA 1220, Selway J considered whether a final order should be set aside. At [11], his Honour stated that even if the party affected consents to the final order being set aside, the order should only be set aside in circumstances "where it is just and appropriate to do so by reason of the 'exceptional circumstances of the case'". This acknowledges the importance of the finality of litigation. 13 In Deputy Commissioner of Taxation v Leaver [2016] FCA 1028, Wigney J stated at [10]: …In my view, however, it does not necessarily follow that exceptional circumstances are required in every case before a final order or judgment can be set aside. That is particularly the case where the party in whose favour the order or judgment was made consents. Much will depend on the particular facts and circumstances of the case. Equally, however, it should not simply be assumed that the Court will necessarily set aside a final judgment simply because it is by consent. The Court retains a discretion not to set aside the judgment. There might well be cases where the Court would refuse to set aside a final judgment even though it was by consent. (emphasis added) 14 This is a case wherein there are clear reasons why order 3 should be set aside. Not only is there no current benefit being derived from Order 3 but as submitted by the first respondent, the order creates "an ongoing risk of inadvertent contempt" by the employees of the first respondent. The applicant, as represented by Mr Theodosiou, being the party in favour of which the order was made, consents to the order being made. As stated above, the second respondent also consents to the orders being made.

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