Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 3) [2008] FCA 1869

Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 3) [2008] FCA 1869

The injunction should be made in the applicant's alternative terms because it more accurately reflected the undertaking whose compliance ceased the infringing conduct, protected the applicant against direct references to software as bing, and avoided determining hypothetical use of other deceptively similar signs. The proposed declarations accorded with the reasons and would avoid further dispute. Costs of the notice of motion should follow the event because the applicant succeeded and there was no misconduct. In the primary proceedings, the applicant achieved a limited but significant success in obtaining injunctive relief for trade mark infringement, the unsuccessful TPA and passing off...

Jurisdiction
Australia
Judgment Date
10 December 2008
Procedural Posture
Intellectual Property Trade Mark Infringement Proceeding; Costs and Injunctive Relief Determination / Reasons for Judgment and Orders Following Judgment in the Primary Proceedings and Notice of Motion
Outcome
Declarations and injunction made; respondents ordered to pay the applicant's costs of the notice of motion and 80% of the applicant's costs of the amended application.
Legal Topics
['trade Mark Infringement' 'injunctive Relief' 'declarations' 'costs Discretion' 'apportionment of Costs' 'effect of Undertaking Given During Trial']
['intellectual Property' 'trade Marks' 'costs'] ['trade Mark Infringement' 'injunctive Relief' 'declarations' 'costs Discretion' 'apportionment of Costs' 'effect of Undertaking Given During Trial']

Case Brief

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Procedural Posture

Intellectual Property Trade Mark Infringement Proceeding; Costs and Injunctive Relief Determination / Reasons for Judgment and Orders Following Judgment in the Primary Proceedings and Notice of Motion

Legal Issues

  1. 1 ["What form of injunctive relief should be ordered following the finding of infringement of the applicant's registered trade mark." 'Whether declarations should be made to clarify that use of the word "bing" to describe software infringed the trade mark but trading under a name including "bing" did not.' 'Whether costs of the notice of motion filed 16 May 2008 should follow the event.' "Whether the applicant's partial success in the primary proceedings and the undertaking given during trial justified apportionment of costs."]

Ratio Decidendi

The injunction should be made in the applicant's alternative terms because it more accurately reflected the undertaking whose compliance ceased the infringing conduct, protected the applicant against direct references to software as bing, and avoided determining hypothetical use of other deceptively similar signs. The proposed declarations accorded with the reasons and would avoid further dispute. Costs of the notice of motion should follow the event because the applicant succeeded and there was no misconduct. In the primary proceedings, the applicant achieved a limited but significant success in obtaining injunctive relief for trade mark infringement, the unsuccessful TPA and passing off...

Court Disposition

Declarations and injunction made; respondents ordered to pay the applicant's costs of the notice of motion and 80% of the applicant's costs of the amended application.

Orders

  • ['It is declared that the use by the first respondent of the word "bing" to describe, name or refer to software utilised by it or its customers was an infringement of the applicant\'s trade mark 836622.' 'It is declared that the first respondent\'s conduct trading under and by reference to a name which includes the...