Case: Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74
Outcome: distinguished
The applicant conceded in this case that it had not lead evidence establishing any actual loss of sales revenue arising from the conduct of the first respondent, but instead claimed damages "at large" as awarded in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Lt d [2008] FCA 74. Damages sought by the applicant were in the sum of $50,000, representing: &#8226; damages on the basis of notional royalty; &#8226; diminution in the value of the applicant's trade mark; and &#8226; loss of reputation. 122 The applicant submitted in this case that factors of assistance to the Court in determining an award of damages at large included: &#8226; the amount of time and effort the applicant had spent developing its reputation; &#8226; that the respondent had had the benefit of using the applicant's asset, namely the Bing trade mark; &#8226; the fact that the respondent had paid $25,000 for the www.bing.com domain name, which was an unlawful use of the applicant's property; and &#8226; the fact that the first respondent pays the owner of the copyright in the first respondent's software the sum of $300,000 per annum. 125 In claiming that damages "at large" should be awarded the applicant relied in part on the decision of Jessup J in Review Australia Pty Ltd v Innovative Lifestyle Investments Pty Ltd [2008] FCA 74. However: &#8226; I consider that Review Australia [2008] FCA 74 is distinguishable from this case. In Review Australia Jessup J accepted that the market presence of the respondents' product did bring about some minor dilution of the applicant's reputation for originality (at [30]). In my view there is some evidence of minor and short-lived confusion of a small number of consumers, but no evidence that there has been any dilution of the applicant's reputation in any respect by the market presence of the first respondent. There is, for example, no evidence (unlike in Review Australia ) that any value placed by the applicant on its goods and services has been diminished by the activities of the respondents. I make this observation particularly in light of the completely different activities of the parties and the markets in which they operate. &#8226; In the absence of demonstration by the applicant of any damage, the principles articulated by the Full Court in Enzed Holdings [1984] FCA 373 ; 57 ALR 167 which I have outlined earlier in this judgment militate against an award of damages. &#8226; Although the applicant relies on evidence of Associate Professor Alpert to the effect that, on the balance of probabilities, the use by the respondents of the mark "bing" has caused a diminution in the value of the applicant's trade mark, I accord the witness' evidence no weight in relation to this issue because: o I am not satisfied that Associate Professor Alpert is an expert on valuation of trademarks or intellectual property law. Associate Professor Alpert's expert report dated 21 December 2007 concerned an overview of key issues from a marketing/branding/consumer behaviour perspective, which area appears to be his area of expertise (Introduction para (c) to report); o considering the witness' expert report and the contents thereof, I draw the inference that, prior to the hearing, he had not directed his mind to the question of monetary valuation of the trade mark in question. Indeed in referring to "brand values" in his report, Associate Professor Alpert appeared to equate the term with brand aspects rather than any financial concept (note, for example, TS 137 ll 34-44, TS 138 ll 1-4); o Associate Professor Alpert's evidence in relation to possible diminution in the value of the applicant's trade mark was theoretical, highly qualified, and not particularly helpful. I refer in particular to: &#9642; the fact that, in response to a question from Mr Franklin SC as to whether the witness had any experience in assessing the value of the trade mark, the witness replied: Not quantitatively, but in what we teach, marketing branding is essential, and we stress the value of the brand. (TS 132 ll 4-6) &#9642; the witness merely agreed that he was able to give the Court "opinions as to the general proposition that a brand is a valuable asset" (TS 132 ll 8-10) and that "these situations can be complex" (TS 132 ll 13-15); &#9642; in response to a question from Mr Franklin SC as to whether Associate Professor Alpert was able to give the Court expert advice on possible causes of diminution and the value of brand, the witness replied: "I'd like to think so, yes" (TS 132 ll 18); &#9642; the witness merely agreed that, assuming that one has a valuable brand that is protected by a registered trademark or a de facto monopoly, one of the reasons that that value might diminish is if someone uses the same or a similar brand in the same market (TS 132 ll 30-33). In noting this evidence I intend no criticism of the witness who was endeavouring to be of assistance. However, in my view, the evidence raises not only serious questions as to the witness' expertise in relation to the issue of value of the relevant brand, but also serious doubts as to its probity.