The applicant had registered BING! for
Class 9 Software for the legal profession and other industries and professions not limited in any way to a specific industry or commercial sector; Class 35 Distribution and sales of computer software.
Class 42 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 respondent provided an internet postal service. To enable subscribers to use the service, it supplied them with software to be downloaded and installed on the subscribers’ own computers.
• The first respondent’s promotional material uses the trade mark “bing” in relation to its software, and through installation and use of the software, the trade mark “bing” appears on the computer screen in various guises. It is clear from the respondents’ own evidence that the first respondent uses the mark “bing” in relation to at least software (class 9); distribution of computer software (class 35), and updating of computer software (class 42).
• The software distributed by the first respondent has a number of components including “bing Client”, “bing Virtual Printer Driver”, “Popup bing Mailroom”, “Control bing Printer”, and “bing Help”.
• Customers of the first respondent enter a software license agreement in respect of the software (and updates) provided to the customer by the first respondent under the name “bing”. Further, the software licence agreements refer frequently therein to “bing”.
Collier J rejected the argument that “bing” in its various guises was substantially identical to BING!, but found deceptive similarity. Of potentially greater significance, her Honour went on to find that the respondent was using the “bing” mark in relation to goods and services covered by the applicant’s trade mark registration:
52 …. I agree with the respondents that the first respondent is engaged in the provision of internet postal services, which prima facie are not goods or services in respect of which the applicant’s trade mark is registered. However I consider it is also clear that, as Mr Franklin submitted, the first respondent’s service is, in the manner in which it is conducted with the majority of its clients, a software-enabled service. 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.
Then, MID Sydney was distinguished:
57 So far as concerns the software provided by the first respondent to its customers bearing the moniker “bing”, in my view that software is a “good” which is both severable from the internet postal service, and would in other circumstances be capable of being the subject of a registered trade mark in its own right within Class 9. Similarly, distributing and updating that software are “services” within classes 35 and 42. The software supplied by the first respondent, and the services provided by the first respondent in support thereof, are not, to draw an analogy with MID Sydney 90 FCR 236, goods or services which lose their features as software because they form part of an overall broader service. The software remains software, which requires distribution and updating, no matter that it is used in connection with the first respondent’s internet postal service.
as was the SAP case relied on by the respondent
61 Where the analogy between these proceedings and SAP Australia 169 ALR 1 breaks down is that while the Full Court accepted in SAP Australia that “broadly based consulting services” could include supplementary training as an adjunct to the provision of custom designed computer systems for clients, in this case it does not follow that software provided by the first respondent is no more than an incident to the provision of its service. As I noted earlier, the software used by the first respondent is a product in its own right – the copyright therein is owned by a third party, and the first respondent has exclusive distribution rights (TS 66 ll 12-13). The first respondent provides the software even though, as Mr Cranitch conceded during cross-examination, 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 (TS 71 ll 40-41). The software and associated services are an important part of the first respondent’s internet postal service.
62 In ascertaining whether software is “incidental” to its internet postal service as submitted by the first respondent, it is useful to test the first respondent’s hypothesis in this way. Computer hardware cannot properly function without the benefit of software. Yet it could scarcely be said in relation to a computer that software loaded on to a computer hard drive was “incidental” to the computer itself, merely because the software allowed the computer to operate in certain ways. This is clear from the many cases involving claims of infringement of trade mark with respect to software (for example, Microsoft Corporation v PC Club Australia Pty Ltd  FCA 1522 and Microsoft Corporation v Ezy Loans Pty Ltd (2005) 62 IPR 54).
63 Software is pervasive in twenty-first century Australia. In the words of one writer:
In case you have not noticed, software is now a key part of our social structure — we sense it in our cars, in our supermarkets, in our televisions, in our computers — we sense it everywhere; it is a ubiquitous, undulating, architectural, air like, water like commodity that infiltrates our daily lives. (Brian Fitzgerald, “Software as discourse?: A constitutionalism for information society (1999) AltLJ 25)
64 However its omnipresence does not, in itself, mean that it fulfils an incidental role in relation to functionalities such as the service provided by the first respondent. Further, the fact that the software used by the first respondent is not sold by the first respondent, or indeed that it has no operation other than in relation to the first respondent’s service, does not mean that it is not “software” for the purposes of classes 9, 35 and 42 for which the applicant has a statutory monopoly.
Collier J then found Mr Crainitch, the managing director, CEO and company secretary of the first respondent, liable for authorising, directing or procuring the corporate respondent’s infringements. Her Honour dismissed the allegations of contraventions of s 52 and 53 of the Trade Practices Act and passing off.
An application to re-open the case after judgment was reserved was dismissed here and the final form of relief granted is here. It would appear that the respondents could continue the postal service under the name “bing” if they can come up with a new name for their software.
Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1)  FCA 1760
Prof. Mark Davison reminded me that her Honour refused to award damages and points out a possible defence that the respondents might have explored here.
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