Trademark infringement not necessarily misleading or deceptive conduct


In Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1) ([2008] FCA 1760, November 25 2008), the Federal Court of Australia has held that Bing Technologies Pty Limited (No 1) had infringed Bing! Software Pty Ltd's registered trademark BING!. 

Bing Technologies provides an internet protocol postal mail service. Customers use the service to send letters over the Internet and have them printed and posted at points closer to the recipient. The word 'bing' is used in relation to its postal service and for software used by clients to enable better use of the service.

Bing! Software provides a Family Court automation software package, predominately to law firms, under the trademark BING!. Bing! Software has a logo incorporating the word 'bing!', which is registered in Classes 9, 35 and 42 of the Nice Classification.
In February 2007 Bing Technologies applied for the registration of the trademark BING. Bing! Software opposed the application and instituted proceedings against Bing Technologies for trademark infringement, breaches of Sections 52 and 53 of the Trade Practices Act 1974 (Cth) and passing off. Bing! Software sought damages, as well as an order that Bing Technologies cease using the word 'bing' in its name or in relation to its internet protocol postal mail service.
The Federal Court found that the BING! mark had been infringed. While the two marks were not substantially identical, they were deceptively similar. Further, the software provided by Bing Technologies was among the goods covered by the BING! mark. In reaching this decision, the court found that Bing Technologies entered into detailed software licensing agreements with its customers for a software called 'bing software', which was an important aspect of the service.
However, Bing! Software's claim of misleading or deceptive conduct under Section 52 of the Trade Practices Act failed, even though there was evidence that a small number of people had actually been confused, as that confusion was only temporary. Bing! Software's claim under Section 53 of the act and for passing off also failed.
During the course of the hearing, Bing Technologies gave an undertaking in court that it would not use the word 'bing!' or any combination of words using the word 'bing!' in relation to software. The effect of this undertaking was that Bing! Software's trademark was no longer infringed and Bing Technologies was permitted to continue to call itself 'Bing' in relation to the provision of an internet postal service.
The court stated that Bing! Software did not have a monopoly in the use of the name Bing as a trademark in respect of any service, including services which are not the subject of Bing! Software's registered trademark, simply because the service requires a person using it to use any form of software.
The court made an order for an injunction on the terms of the undertaking provided to the court, but declined to grant all other relief sought. In relation to the claim for damages, the court found that Bing! Software had failed to establish any impact on the value of its trademark or its reputation. This finding, combined with the fact that the activities and customers of the parties were completely different and that any confusion was short lived, resulted in the court concluding that damages were not warranted.
Lili Dent and Lisa Ritson, Blake Dawson, Sydney

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