When is trade mark infringement not also misleading and deceptive conduct? Bing!
In Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) [2008] FCA 1760, Justice Collier in the Federal Court in Brisbane has just handed down a judgment in a case alleging trade mark infringement and a breach of s52 of the Trade Practices Act 1974 (Cth) (TPA).
The registered owner of the trade mark ‘Bing!’ won its trade mark infringement action but was unsuccessful in its claims of breaches of the TPA and passing off which, in itself, is an interesting statement about the usefulness of registration compared to relying on passing off principles.
Bing! 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’. I think this means software for the legal profession and software for anyone else but the legal profession. The statement reminds me of the way that we can divide the world into two types of people, namely, those who divide the world into two types of people and those who don’t.
The trade mark owner’s primary business is for a Family Court document automation software package. It also has software packages for conveyancing. It calls its software ‘Bing!’
The defendant’s business involves ‘an internet protocol postal mail service’, a seeming amalgam of e-mail and snail mail. Clients of the service have letters in electronic form routed to a location close to the intended recipient of the letter. They are printed and posted there. The ‘net’ result (that’s a pun) is that hard copy arrives at the intended destination more quickly and more cheaply than if sent from the client’s location. The problem was that in order to provide the service, the defendant also needed to provide the software for the service which it also called Bing. The defendant did not target the legal profession and provided the service to the commercial sector generally.
There are a few interesting points about the case and the decision. First, the defendant claimed it was providing a postal service, not a good (software), and therefore was not using a deceptively similar trade mark for the goods in respect of which registration existed. Unfortunately, Collier J did not buy the argument. In order to provide the service, they also provided the software separately and had extensively referred to the software as Bing software.
Second, even though trade mark infringement was established, Collier J declined to award any damages. The plaintiff led no evidence of damage and relied on a claim for ‘damages at large’ or is that large damages? I think it was the former. In any event, Her Honour was unconvinced that any loss or damage had occurred as the two businesses related to very different markets.
Finally, the claims based on the TPA and passing off were rejected. The two markets of the parties were very different and any initial interest confusion caused by the two pieces of software with virtually identical names was quickly dispelled.
I will leave off with one thought. If the plaintiff has only used its software for the legal profession and since it registered its trade mark as ‘software for the legal profession and software for everybody else’, there might have been the possibility of making a non-use application in respect of ‘software for everybody else’. This is where that facetious comment earlier in this piece about dividing the world into two kinds of people might come in handy. If a partial non-use application were successful, the plaintiff would then have had to prove that the defendant had provided its software to the legal profession in order to establish use of a deceptively similar trade mark in respect of the goods for which registration existed. Alternatively, the plaintiff would have had to rely on s120(2) and claim that the defendant’s goods were of the same description as those of the plaintiff. At that point, the defence in s120(2) might have been available.
