REASONS FOR JUDGMENT
GREENWOOD J:
86 I have had the benefit of reading the reasons for judgment of Kenny J. I broadly agree with those reasons and the orders proposed by her Honour but wish to add the following observations. I will seek to avoid repeating much of the background comprehensively addressed by her Honour.
87 In this appeal the appellant does not challenge the findings of fact made by the primary judge. Rather, the appellant contends that having regard to those findings, the primary judge, in relation to the finding of infringement of the appellant's registered trade mark, ought to have framed a remedial injunction order in terms of a prohibition upon the first respondent (Bing Technologies) "using within Australia 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" (Order 2 of the application amended on 20 November 2007), or, alternatively, in terms of the appellant's subsequently adopted "preferred wording", in these terms:
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 mark is registered.
88 On 10 December 2008, at a second hearing directed to the form of the final orders consequent upon the primary judgment, the primary judge made an order in these terms:
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".
89 That order reflected the terms of an undertaking given to the Court by the respondents, by counsel, on the second day of the trial, 11 March 2008. On 12 March 2008, Mr Cranitch, the Managing Director of Bing Technologies, filed an affidavit describing the steps taken, in effect, to implement the undertaking by abandoning use of the word Bing in documentation, websites or otherwise in referring to software, and substituting the use of the former name or mark "EasyMail" as a badge of identification of the software supplied by Bing Technologies as a part of the provision of its service described as an "internet protocol postal mail service" ([8], primary judgment).
90 The appellant describes itself as Bing! Software Pty Ltd. It commenced business in 1997. It sells software. It has a registered device trade mark [5] consisting of a rectangle prominently containing the word BING in conjunction with an exclamation mark against a black infusing background. The trade mark is registered in Class 9 "for software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector". The parties agreed that those concluding words have the effect that the mark is registered for software unconfined to any particular industry or commercial sector; Class 35 for the service of "distribution and sales of computer software"; and Class 42 for "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 primary judge found that the appellant uses the trade mark and that part of the trade mark represented by "BING!" on its software (on screen), software user guides, documentation, and software marketing material. "Bing" is an onomatopoeic word.
91 The first respondent calls itself Bing Technologies. It uses the word "Bing" extensively with varying degrees of emphasis in the course of conducting its commercial undertaking. Those uses include the depiction of the word as Bing and bing and in lower case within a rectangle set against a contrasting black or white background and, in some cases, with the addition of the words "postal mail internet speed" and a small arrow device. The images are reproduced at [10] and [11]. On 6 February 2007, Bing Technologies lodged an application for the trade mark "Bing" in Classes 9, 16, 38 and 39. The content of the goods and services falling within those applications is set out at [12].
92 The content of the internet protocol postal mail service provided by Bing Technologies was the subject of findings by the primary judge. The "nature" of the business was described by the primary judge as a service which enabled customers of Bing Technologies to route letters over the internet and cause them to be printed and posted at points close to the proposed recipient with the result that users of the service would experience faster, cheaper and more efficient letter‑based communications ([8], primary judgment). The primary judge found that the first respondent's service involved a number of component parts including the engagement by the client (user) in creating a particular letter; the provision by Bing Technologies to the user of print driver software called "mail room" which enabled a printer to print the relevant letter in a particular location; the provision of that software to the user "as a means to access the service"; and use, in the main, by clients of the service of an older version of the print driver software called "EasyMail" ([9], primary judgment). The primary judge found that Bing Technologies' internet protocol mail service involves "key activities" of printing mail in an appropriate location, folding that mail and posting it ([112], primary judgment). The primary judge found that the first respondent's internet protocol mail service involved "considerably more than use of software" ([112], primary judgment).
93 The primary judge found that Bing Technologies is engaged in "the provision of internet postal services" (her Honour's emphasis) and that having regard to the manner in which that service is conducted with the majority of its clients, the service is "a software‑enabled service" ([52], primary judgment - her Honour's emphasis). Her Honour, at [52] and [53], observed:
52. … 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.
53. 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.
[emphasis added]
94 Accordingly, the primary judge found that so far as the majority of the users of the service are concerned, the service is an internet, software‑enabled service where the software is an important aspect of the service which allows the service to operate. Since the software, for the majority of clients of the service, facilitates the operation of the service, the primary judge described the software "aspect" of the service as "considerably more than 'incidental' to the operation of the first respondent's service", yet found that the service involved "considerably more than use of software".
95 At that part of [52] quoted above, her Honour observes that customers of the service can access the service without specific software and that the facility for doing so would be the subject of further comment in her Honour's reasons. At [61] of the primary judgment, her Honour noted that the software used by the first respondent is a "product" in its own right and the subject of an exclusive distribution agreement in favour of Bing Technologies from the copyright owner. Her Honour noted that Bing Technologies provides the software to users of the service even though "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". Her Honour noted again the earlier observation at [53] although in different terms, that "the software and associated services are an important part of the first respondent's internet postal service". [61] The primary judge found at [112] that for use of the first respondent's internet postal service, customers are required to use a computer and invariably software, to effect access to the service which might be either the first respondent's "EasyMail" software or "alternative methods including emailing PDF attachments".
96 Although PDF attachments might be emailed by some users of the service to a location for printing, her Honour found that for the majority of users of the service, the first respondent's software is a sufficiently important part of the first respondent's internet postal service that access to the first respondent's software enables access to the service. For the majority of users, the bundle of services making up the internet protocol mail service are not able to be taken up "operationally" without access to the first respondent's software. In this appeal, the appellant contends that the findings of the primary judge, properly understood, go so far as to establish the proposition that without access to the software a user cannot gain access to the first respondent's service. The findings of the primary judge are said to be entirely consistent, in that regard, with the underlying software licence agreements mentioned at [53] and [61]. The appellant contends that those documents did not receive sufficient elaboration in her Honour's reasons and a consideration of them is necessary in determining the ground of contended error that her Honour did not frame the final injunction in terms which properly give effect to remedial rights in the appellant arising out of the finding that the first respondent's use of the word "bing" in its various manifestations gave rise to infringement of the appellant's registered trade mark on the footing that the first respondent had used as a trade mark a sign deceptively similar to the trade mark in relation to goods, namely, software, in respect of which the appellant's trade mark is registered.
97 The appellant contends that the degree of integration between the service provided by Bing Technologies to users and the essentiality of the enabling software is such that use of a deceptively similar sign as a trade mark in relation to the service provided by the first respondent is necessarily use of the trade mark in "other relation to" the software for the purposes of s 7(4) of the Trade Marks Act 1955 (Cth) ("the Act") and thus constitutes use of a deceptively similar trade mark in relation to goods for which the mark is registered, namely, the Class 9 registration for software, for the purposes of s 120(1) of the Act, notwithstanding that the appellant has not secured registration of its trade mark for the service provided by the first respondent of which the software is an important component part. Although the relevant provisions are well known, it is convenient to note ss 120(1), 7(4), 10, 20(1) and 20(2) of the Act which are in these terms:
120(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.
7(4) In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
10. 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.
20(1) If a trade mark is registered, the registered owner of the trade mark has, subject to this Part, the exclusive rights:
(a) to use the trade mark; and
(b) 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.
(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.
98 The appellant says that the essentiality of the software to the provision of the first respondent's commercial service can be seen plainly from the terms and conditions of an agreement described as a "Service Application Form" entered into between Bing Technologies and a user of the service. The agreement contains a statement immediately under the heading, in these terms:
Your use of the Software and the provision of the Services are governed by the terms and conditions set out on the other side of this page and any terms set out on this page. …
[emphasis added]
99 The document defines Services and Software in these terms:
Services means printing, folding, inserting into envelopes and posting Documents having a substantially similar appearance as the Document appears immediately prior to transfer.
Software means the object code version of the software known as Bing including any updates provided by Bing to the Customer from time to time.
100 "Bing" is defined to mean Bing Technologies and "Document" means any document including written correspondence, brochures, invoices and purchase orders. By cl 2.1 of the terms and conditions, Bing Technologies grants the customer a perpetual, non‑exclusive, non‑transferable licence to install and use the Software on any computers that the user owns or directly controls and by cl 2.2 the user is prohibited from granting a sub‑licence. Clause 3 addresses the Services provided by Bing Technologies. Clause 3.1 provides that "the Software allows the Customer [user] to transfer documents over the internet to Bing". Clause 3.2 provides that for the term of the agreement "Bing will provide the Services in relation to Documents transferred to it by the customer". The appellant says that by cl 3.1 the user is given the necessary licence to use the software and by cl 3.2 the services related to the documents so transferred to it, are to be provided to the user.
101 The appellant says that the close structural relationship between the service and the software provided by Bing Technologies reflected in the user agreement is reinforced by Bing Technologies' use of "Bing" in its name and, more particularly, its extensive use of "Bing" as a trade mark to identify its service in its Home page, Product Features page, Innovation page, Frequently Asked Questions page, Awards Achieved page, News page, "How It Works" page and "How Bing Saves Average" page.
102 It follows, it is said, that Bing Technologies is using a deceptively similar sign as a trade mark in "other relation" to software. It also follows, it is said, that the primary judge erred by failing to frame a final injunction in terms which restrain use of the deceptively similar mark in other relation to software so as to enjoin Bing Technologies from using the mark in any relationship with the internet protocol mail service. The respondents say that the examples noted at [101] above no longer occur having regard to the undertaking and its implementation as accepted by the primary judge and thus the examples are irrelevant. More fundamentally, the respondents say that the appellant is simply seeking to extend the statutory boundary of its exclusive right to use a registered trade mark in relation to goods or services in respect of which the trade mark is registered (s 20(1) of the Act) by seeking to prevent the first respondent from using the registered trade mark or a deceptively similar trade mark in the course of providing a service for which the trade mark is not registered by the appellant. Thus, the appellant seeks to improperly extend, it is said, the scope of the statutory monopoly.
103 The primary judge found that the service provided by the first respondent was to be characterised in a disaggregated way by treating the software component of the first respondent's service as a "good" severable from the internet postal service. Her Honour seemed to also treat the service of distribution and updating of the software as severable from other "key activities" ([112], primary judgment) comprising the service ([57], primary judgment). Thus, the first respondent's software is a "product" in its own right ([61], primary judgment). Her Honour found that the first respondent's supply of software and provision of software distribution and updating services fell within the scope of the appellant's trade mark registrations in Classes 9 and 35 ([65], primary judgment).
104 At [41], her Honour found that the first respondent's use of the word "bing" in its various manifestations involved use of a sign as a trade mark that was deceptively similar, although not substantially identical, to the appellant's registered trade mark. At [41], her Honour made these findings. First, the marks of the appellant and the first respondent although visually different both feature the word "bing" and the spelling and sound of that word is identical to both marks. Second, a user of either the appellant's software or the first respondent's service must use a computer and the electronic computer‑based character of the first respondent's service was given emphasis in an advertisement in a Virgin Blue in‑flight magazine of December 2007 depicting an Australia Post mail box linked by a computer cord to a computer and a monitor with the mark "bing" prominently displayed on the monitor and in the right‑hand corner of the advertisement. Third, her Honour, after referring to the Virgin Blue advertisement then found:
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.
[emphasis added]
105 Thus, her Honour found that the first respondent's use of the mark might cause confusion notwithstanding the introductory finding at [41] that "the businesses of the parties are completely different"; "the parties have no customers in common"; and the parties "operate in completely different markets". The appellant places particular reliance on the Virgin Blue advertisement because it is said to demonstrate an acceptance by the primary judge central to the finding of infringement of the appellant's trade mark of use of a deceptively similar mark by the first respondent to promote its software‑enabled service rather than a severable software product. The primary judge in reaching the conclusion quoted above, had regard to the evidence of Mr Kenna who had seen the Virgin Blue advertisement and assumed that the advertisement related to the appellant's products and that the "mailing software" emanated from the appellant. The primary judge also had regard to the evidence of Mr Helm concerning individuals who had contacted the appellant in the mistaken belief that they were contacting the first respondent. The primary judge accepted that whilst evidence of actual confusion is not decisive of the question in issue, it remains "of considerable importance".
106 The primary judge accepted that the evidence of a marketing expert, Associate Professor Alpert, "on balance" supported a finding of deceptive similarity. Associate Professor Alpert's evidence accepted by her Honour at [41] was to the following effect. If a potential customer only saw the word "bing", he or she could be led to wonder if "it" was related to the appellant. A customer who knew the appellant's software by reference to the trade mark BING! "could be caused to wonder whether 'bing' came from the same source". The word "bing" was a prominent word in the trade mark of the appellant and the first respondent. A person who had 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". An IT person who had never seen the first respondent's website and the branding on that site but who knew of the appellant "might be confused on seeing the first respondent's software as displayed on a computer screen". On seeing the Virgin Blue advertisement adopting 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" and, finally, "consumers would experience both 'purchase confusion' and 'initial consideration confusion' in relation to the respective marks of the [appellant] and the first respondent".
107 At [42], the primary judge made reference to "this deceptive similarity" which seems to suggest that her Honour also accepted the evidence of Associate Professor Alpert as emblematic of the sources of wonderment and thus confusion arising out of the use of a deceptively similar mark by the first respondent.
108 At [75] of the primary judgment, her Honour makes findings about the nature of the confusion. Her Honour does so, plainly enough, in the context of discussing the entirely separate question of whether the conduct of the first respondent engages s 52 of the Trade Practices Act 1974 (Cth) as conduct that is misleading or deceptive or likely to mislead or deceive. However, in discussing the content and character of confusion, her Honour said this:
Assuming that it is "ordinary members" of the general public at whom the first respondent's conduct is directed, it is clear however that evidence of misconception arising in the minds of members of the public was minimal. Such evidence of misconception as exists from the evidence of Mr Helm (primarily arising from the similarity of the domain names used by the parties), and Mr Kenna (arising from the advertisement in the Virgin Blue in‑flight magazine), demonstrates that any confusion was transient and ephemeral. The evidence also indicates that, while there were a small number of instances of initial confusion, those instances were resolved at the point of inquiry. Indeed this could scarcely be otherwise - the goods and services of the applicant and the first respondent are so different that an ordinary member of the public seeking services offered by one of the parties would clearly not be satisfied by services offered by the other, and would realise this very quickly.
[emphasis added]
109 Having regard to the findings at [41], the findings of severability at [57] and the findings at [65] that the first respondent's supply of software and provision of software distribution and updating services fell within the scope of the appellant's trade mark registrations in Classes 9 and 35, the primary judge found at [65] that the first respondent had infringed the appellant's trade mark by using a deceptively similar trade mark in relation to the supply of software and the provision of distribution and updating services, in relation to that software.
110 Lest it be thought that the supply of software or the provision of distribution and updating of software by reference to the mark "bing" was more than an incidental component of the aggregated service of the first respondent, Bing Technologies sought to "clear the decks", put anecdotally, by giving an undertaking to the Court not to use "bing" as a mark in relation to its software whether described, prior to the undertaking, as "bing software", "bing mail room software" or any other combination of words using the word "bing". That undertaking ultimately led to Order 3 of the orders of 10 December 2008 imposing a prohibition "in relation to all references to software" in the course of the first respondent's business upon the use of the word "bing" when "directly referring" to software in documentation or websites or otherwise or when "referring" (which is presumably intended to be a reference other than a direct reference) to "software itself" no matter what combination of words might be adopted, or the use of "bing" in combination with particular software titles.
111 The first respondent contended before the primary judge and on appeal that once the undertaking was given and implemented, and particularly once the orders of 10 December 2008 were made, there could be no continuing infringement of the appellant's trade mark because from that moment in time the first respondent was no longer using the appellant's trade mark or a mark deceptively similar to the appellant's trade mark in relation to goods or services in respect of which the appellant's trade mark was and is registered.
112 In addressing the question of infringing conduct rather than the scope of the orders, the primary judge at [112] of the primary judgment said this:
If "bing" does not appear on, inter alia, software, agreements pertaining to software, or computer screens with reference to software when a customer accesses the first respondent's service or website, I understand that the first respondent would only use "bing" to describe itself and the operation of its internet postal service. This service is not covered by the applicant's trade mark. The fact that the internet postal service requires customers to use a computer and, invariably, software in the course of using the computer to effect and access the service … does not mean in the circumstances following the provision of the undertaking that the first respondent's conduct infringes the applicant's registered trade mark.
113 The primary judge concluded paragraph [112] with the finding:
The first respondent's internet postal service involves considerably more than use of software - indeed key activities are printing mail in the appropriate location, folding it and posting it. These activities are not goods and services the subject of the applicant's registered trade mark.
[emphasis added]
114 At [113], the primary judge reached this conclusion:
However if the software provided by the first respondent does not bear the mark "bing", I do not see how the applicant's trade mark is infringed through the first respondent continuing to call itself "bing" in relation to provision of an internet postal service, which (according to Mr Cranitch's affidavit of 12 March 2008) uses a software called "Easymail". I do not accept that the applicant has a monopoly in the use of the name "bing" as a trade mark in respect of any service, including services which are not the subject of the applicant's registered trade mark, simply because the service requires a person using it to use any form of software. Such a proposition, in my view, takes the applicant's statutory monopoly beyond that sanctioned by the Act.
[her Honour's emphasis]
115 Apart from the injunction order, the Court on 10 December 2008 made a declaration, supported by the first respondent, 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 836622.
116 The Court made a further declaration supported by the first respondent 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".
117 The appellant contends that the degree of integration between the first respondent's service and the essentiality of enabling software renders use of the mark "bing" by the first respondent in relation to its service, a use in relation to goods (software) and services (distribution and upgrading of software) in respect of which the mark is registered. That conclusion relies on asking whether the first respondent's service is so bound up with the supply of software and software distribution (and upgrades) that although the content of the service involves a particular set of activities as found, a use of the mark in relation to the service is properly characterised as a use in relation to software. However, s 120(1) of the Act does not ask that question. It asks whether the use of a trade mark or, relevantly here, a deceptively similar trade mark, has occurred in relation to goods or services for which the trade mark is registered. The appellant has not registered its trade mark for the service the first respondent provides, as found. The primary judge made findings as to the content of the service. The service goes beyond the supply or distribution of software. That supply is a component part, albeit an important component part, of the service.
118 Since s 120(1) of the Act is the expression of conduct contemplated by s 20(2) of the Act which infringes the exclusive rights conferred by s 20(1) of the Act on the registered owner of the trade mark and thus determines the boundary of the statutory monopoly, the primary judge was required to ask the particular question required by the Act, that is, did the first respondent use as a trade mark, a sign that is deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered? The immediate answer to that question is, no. On 6 February 2007, the first respondent lodged trade mark applications for the trade mark "bing" in Classes 38 and 39 in these terms:
Class 38: Data transmission by electronic mail; electronic mail; provision of electronic mail facilities.
Class 39: Forwarding of mail; franking of mail; mail forwarding.
119 Whether the service provided by the first respondent is defined in part in terms of the services set out above or by reference to the findings of the primary judge or both, the appellant has not registered its trade mark in connection with such services. The appellant says that s 7(4) of the Act with respect to goods and where relevant s 7(5) in similar terms in relation to services, broadens the statutory notion of the relationship between use by the first respondent of a mark, and goods or services in respect of which the trade mark is registered. In effect, the appellant says that s 120(1) addresses use "in relation to goods or services" in respect of which the goods or services are registered, and s 7(4), in relation to goods, requires a question to be asked of whether the use is use "upon" goods, or use in "physical relation" to goods or use in "other relation" to the goods. The appellant says that in answering the last limb of that question, use of the mark on websites or advertisements in relation to a service that is software‑enabled and taken up by the majority of users through distributed software that is required to be taken up in order to operate the service, is use of the mark in other relation to the goods and thus use of the trade mark "in relation to goods" for the purposes of s 120(1) by operation of s 7(4).
120 Although ss 7(4) and 7(5) identify categories of use of a trade mark that establish a relation to goods or services, that relation must, through such use, be in respect of goods or services for which the mark is registered, that is, for example, particular use in relation to goods for the purposes of s 7(4). It would be an odd result to conclude that use of the trade mark related to services not the subject of a registration is use in other relation to goods the subject of a registration. Moreover, s 7(4) has conventionally been regarded as extending use of the trade mark in relation to goods, to use of the mark upon closely related instruments or documents of trade in goods especially as a mark is used as a trade mark. Such documents include invoices, advertisements, swing tags, wrappers, brochures, letterhead and facsimile sheets. There are many authorities dealing with such related things falling within the scope of s 7(4) of the Act. Kenny J has identified some of them at [68]. I agree with Kenny J that the appellant has failed to demonstrate, for all the reasons identified by her Honour, that the primary judge was not astute to the application and operation of s 7(4) of the Act.
121 Fundamentally, the use of the trade mark "bing" by the first respondent in the post‑undertaking (and post‑Order 3) environment is a use of a mark in relation to the services provided by the first respondent as found rather than use in relation to software or use in "other relation" to software or software distribution services.
122 I agree with Kenny J that having regard to the findings of the primary judge, the form of Order 3 ought to have incorporated a prohibition upon use of the trade mark in relation to software and software distribution services consistent with the orthodox understanding of the reach of that phrase within s 7(4) of the Act framed in terms of the relevant conduct.
123 As to the further ground of appeal raising the question of whether the conduct of the first respondent was misleading or deceptive or likely to mislead or deceive the relevant addressees, the appellant contends that such a conclusion was "indisputable" on the evidence of Mr Kenna, the expert opinion evidence of Associate Professor Alpert and her Honour's assessment of the Virgin Blue advertisement in the context of Mr Helm's evidence. The question of whether a person has engaged in conduct properly characterised as use, as a trade mark, of a sign that is deceptively similar to a registered trade mark in relation to goods or services in respect of which the trade mark is registered, is an entirely separate and distinct question from whether that conduct, understood contextually, is elevated to conduct that satisfies the statutory description of conduct within s 52 of the Trade Practices Act 1974 (Cth).
124 The primary judge found that the first respondent's use of the word "bing" in its various manifestations involved use of a sign as a trade mark that was deceptively similar to the appellant's registered trade mark in relation to the supply of software, and the distribution and upgrading of software, in respect of which the trade mark was registered. The primary judge found that use by the first respondent of its mark might cause the average consumer with ordinary intelligence with an imperfect recollection of the appellant's trade mark, seeing or hearing the first respondent's mark, to wonder whether goods or services supplied pursuant to the first respondent's mark might be sourced from the appellant. That finding arose out of a method of analysis adopted by the primary judge consistent with the method reflected in the observations of Gummow J in Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 49 FCR 89 at pp 124 to 130 and particularly at pp 128F to 130D: see also Aldi Stores Ltd Partnership v Frito‑Lay Trading Co. GMBH (2002) 54 IPR 344 at [84] to [88] per Lindgren J. The degree of wonderment or confusion identified by the primary judge was described by her Honour as transient and ephemeral comprising a small number of instances of initial confusion which were resolved at the point of inquiry. The primary judge examined the contextual circumstances of confusion and observed that the goods and services of the appellant and the first respondent are so different that an ordinary member of the public seeking services offered by one of the parties would clearly not be satisfied by services offered by the other and would realise this very quickly. The finding of confusion at [41] was introduced by the contextual observation that "the businesses of the parties are completely different"; "the parties have no customers in common"; and the parties "operate in completely different markets" [41]. These evaluative findings were open on the evidence before the primary judge. As to the relationship between the trade mark law concept of confusion in the sense of wonderment as to origin or connection, and conduct meeting the statutory description within s 52 of the Trade Practices Act 1974, French J made these observations in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 at 427:
The trade mark law concept of confusion in the sense of mere wonderment as to common origin or connection has little part to play in the consumer protection statutes. That, no doubt, is because "confusion" used in that sense, does not of itself lead into error or affect choices at the point of sale. It is perhaps best described in trade mark law as effecting a prophylactic support for commercial distinctiveness.
125 In Campomar v Nike International (2000) 202 CLR 45, the Court, per Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ, at [94] and [95] also recognised a distinction between conduct giving rise to a state of confusion falling short of an actual probability of deception, on the one hand, and conduct which satisfies the statutory description of conduct within s 52 of the Trade Practices Act 1974, on the other. The primary judge found that although the average consumer with ordinary intelligence and an imperfect recollection of the appellant's trade mark might be caused to wonder as to the source or origin of the goods or services supplied by reference to the first respondent's mark, the first respondent's conduct fell short of being misleading or deceptive or likely to mislead or deceive such a member of the public.
126 For the reasons identified by Kenny J, the conduct of the first respondent did not involve a contravention of s 52 of the Trade Practices Act 1974. I also agree, for the reasons identified by Kenny J, that the discretion of the primary judge in relation to the question of costs, did not miscarry.
127 I agree with the orders proposed by Kenny J.
I certify that the preceding forty-two (42) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Greenwood.