Appeal allowed in part in BING Case

In Bing! Software Pty Ltd v Bing Technologies ([2009] FCAFC 131, September 30 2009), the Full Federal Court of Australia has allowed, in part, an appeal by Bing! Software Pty Ltd against a decision of the Federal Court at first instance in which the latter had granted Bing! Software injunctive relief for trademark infringement on limited terms. The significance of the decision lies in:

• the court's analysis of what constitutes use of a trademark in relation to goods and services; and
• its reaffirmation of the different tests required to determine trademark infringement and conduct likely to mislead or deceive in breach of the Trade Practices Act 1974.

Bing! Software markets goods and services, primarily to law firms, under its trademark BING!. The mark is registered for software in Class 9 of the Nice Classification, and distribution and upgrading services in respect of software in Classes 35 and 42. Bing Technologies Pty Ltd provides an internet protocol postal mail service which enables letters to be routed over the Internet, and printed and posted at delivery points closest to the recipient. The service includes the provision of enabling computer software for which separate licence agreements exist.

At first instance, the Federal Court found that Bing Technologies had infringed Bing! Software's registered mark by using the term 'bing' as a trademark in respect of software, and distributing and updating that software. However, there was no infringement in respect of Bing Technologies' electronic mail services. Accordingly, the court granted an injunction (based on an undertaking provided by Bing Technologies early on at the hearing) on terms which restrained Bing Technologies from using 'bing' as a trademark to:

• refer directly to software in any documentation, on websites or otherwise; or
• refer to software itself as 'bing', 'bing software' or 'bing mailroom software'.

The court dismissed the case in respect of passing off and conduct likely to mislead or deceive on the basis that:

• a significant number of the general public would not be likely to be misled; and
• any brief association between the two trademarks would be of no significance, as the goods and services, as well as the markets to which they were directed, were quite different (for further details please see "Trademark infringement not necessarily misleading or deceptive conduct".

The Full Federal Court agreed with the primary judge's application of the law. In respect of the Trade Practices Act claim, the court restated what has long been the law in Australia - namely, that the inquiries in respect of trademarks infringement, and those in respect of conduct likely to mislead or deceive, are different. The court pointed out that "the question of whether particular conduct causes confusion or wonderment cannot be substituted for the question of whether the conduct answers the statutory description" of conduct likely to mislead or deceive, as observed in the Taco Bell Case.

In respect of trademark infringement, Bing! Software sought to restrain use of the BING mark on Bing Technologies' website and in advertisements. It argued that the degree of integration between software and mail distribution services was such that use of the term 'bing' in relation to electronic mail services was use in relation to the computer software and software distribution services of its registration.

The court disagreed, pointing out that "it would be an odd result" to reach such a conclusion. The court did accept that the supply of software and the provision of software distribution and upgrading services under the BING mark was infringing (and, in that regard, slightly expanded the orders made at first instance), but did not agree that this prevented Bing Technologies from providing its electronic mail services under the mark.

Tim Golder and Deborah Jackson, Allens Arthur Robinson, Sydney