Bing! Software v Bing Technologies [2009] FCAFC 131

FEDERAL COURT OF AUSTRALIA

Bing! Software v Bing Technologies [2009] FCAFC 131

TRADE MARKS – first respondent gave an undertaking during trial – appellant succeeded in trade marks infringement claim under Trade Marks Act 1995 (Cth) before the primary judge – injunction followed the terms of undertaking – whether injunction too narrow in light of the words "in relation to" in s 20(1) and s 120(1), as defined in s 7(4) of the Trade Marks Act – appellant did not show that primary judge failed to have regard to s 7(4) – terms of undertaking imprecise – injunction gave insufficient protection – appeal allowed in part TRADE PRACTICES – whether, on factual findings, the primary judge erred in rejecting misleading and deceptive conduct claim under s 52 of the Trade Practices Act 1974 (Cth) – different nature of inquiries under s 120 of the Trade Marks Act and s 52 of Trade Practices Act – role of appellate court in considering primary judge's evaluation of primary facts – no error disclosed – appeal dismissed COSTS – exercise of discretion in relation to costs by primary judge – no relevant error – appeal dismissed Trade Marks Act 1995 (Cth) ss 7(4), 7(5) 10, 20, 120(1) Trade Practices Act 1974 (Cth) ss 52, 53 MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 cited SAP Australia Pty Ltd v Sapient Australia Pty Ltd (1999) 169 ALR 1 referred to Chase Manhattan Overseas Corp v Chase Corp Ltd (1986) 12 FCR 375 cited Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd (1978) 140 CLR 216 cited Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 referred to Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 referred to Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 referred to Lumley Life Ltd v IOOF of Victoria Friendly Society (1989) 16 IPR 316 referred to Global Sportsman Pty Ltd v Mirror Newspapers Ltd (1984) 6 ATPR 40-463 referred to Equity Access Pty Ltd v Westpac Banking Corporation (1989) 16 IPR 431 referred to Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 referred to Wingate Marketing Pty Ltd v Levi Strauss & Co (1994) 28 IPR 193; 49 FCA 89 referred to Aldi Stores Ltd Partnership v Frito‑Lay Trading Co. GMBH (2002) 54 IPR 344 referred to Pioneer Kabushiki Kaisha v Registrar of Trade Marks (1977) 137 CLR 670 referred to Angoves Pty Ltd v Johnson (1982) 43 ALR 349 cited Brother Industries Ltd v Dynamic Supplies Pty Ltd (2007) 73 IPR 507 cited Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 referred to Cretazzo v Lombardi (1975) 13 SASR 4 cited Dr Martens Australia Pty Ltd v Figgins Holdings Pty Ltd (No 2) [2000] FCA 602 cited Doric Products Pty Ltd v Lockwood Security Products Pty Ltd (2002) 54 IPR 495 cited House v The King (1936) 55 CLR 499 referred to Shanahan's Australian Law of Trade Marks and Passing Off (Lawbook Co, 2008, 4th edition), M Davison, T Berger, and A Freeman BING! SOFTWARE PTY LTD ACN 078 281 197 v BING TECHNOLOGIES PTY LTD ACN 098 420 903 and STEVEN PATRICK CRANITCH