Case: MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236
Outcome: distinguished
The respondents cite in support of their case MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1 , both of which are authorities for the proposition that, when comparing services, one should focus primarily on a comparison of the totality of the two services rather than the individual aspects of those services (cf comments in Davison M, Monotti A and Wiseman L, Australian Intellectual Property Law (Cambridge University Press, 2008) p 105). This contention is superficially attractive, however in my view falters on closer examination. 54 In considering the principles articulated in MID Sydney 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1 I am of the view that the facts of the case before me do not support an application of those principles. 55 In MID Sydney 90 FCR 236 (so far as material in the present case) the appellant was the registered proprietor of the trade mark "The Chifley Tower", registered for services in class 36 described as " leasing of office and retail space; building and property management ". The respondents proposed to use the word "Chifley" in relation to hotel-related services. The Full Court accepted that the hotel business entailed "management" of hotel properties. However the Court did not accept that hotel-related services therefore were "property management" services within the meaning of class 36. As the Court observed: The conduct of an hotel business includes the accommodation of guests, the operation of restaurants and bars (including compliance with the liquor licensing law) and the provision of conference and business facilities and of other services normally offered by hoteliers. These activities cannot ordinarily be described as "property management services". To elaborate on what might be thought an obvious proposition about the ordinary use of language is often not profitable. But the ordinary meaning of property management services - and this is supported by Mr Garnett's evidence about his own business activities - would not encompass the occupation of a property under contract with, or licence or lease from, its owner or lessee in order to manage a business, for the benefit of both the manager and the owner or lessee, conducted on that property. (at 242) 56 Later their Honours continued: It was suggested that, if a manager provided services falling within the description "property management services", those services did not lose that character because they formed part of an overall business having features other than the provision of property management services. Certainly it is true that a provider of property management services is no less such a provider because it provides, in the course of its business, other services as well. But where, in this case, services are performed which are incidental to the conduct of the hotel business, it is not correct, in our view, to conclude that Touraust is using the word "Chifley" (or a sign incorporating it) in relation to property management services. (at 242-243) 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. 60 In dismissing the appeal before it the Full Court observed that there was some force in the respondent's contention that the trial judge erred, favourably to the appellants, in finding that the respondent's use of "Sapient" was in relation to the same services as the services in respect of which the second appellant's trade mark was registered. Their Honours continued: While Sapient Australia provides instruction to its customers on how to use the software solutions it has specifically designed and implemented for them, the provision of that instruction is no more than an incident to the provision of the more broadly based consulting service. Sapient Australia is simply not engaged in the general activity of providing education and training in computer software. Its trade is quite different: see MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 42 IPR 561 at 565-8. In the light of the conclusion we have reached it is not necessary to consider whether we should depart from his Honour's finding on this point... (at 11) (emphasis added) 113 Mr Crowe SC submitted that, if the first respondent could not successfully rely on MID Sydney 90 FCR 236 prior to the provision of the undertaking, it could do so following the provision of the undertaking (cf TS 174 ll 28-37). In my view this is not strictly the case. As I have already observed, I do not consider that MID Sydney 90 FCR 236 applies because I consider that the software is not "incidental" to the provision of the internet postal service in the sense used in MID Sydney 90 FCR 236 and SAP Australia [1999] FCA 1821 ; 169 ALR 1. However if the software provided by the first respondent does not bear the mark "bing", I do not see how the applicant's trade mark is infringed through the first respondent continuing to call itself "bing" in relation to provision of an internet postal service, which (according to Mr Cranitch's affidavit of 12 March 2008) uses a software called "Easymail". I do not accept that the applicant has a monopoly in the use of the name "bing" as a trade mark in respect of any service, including services which are not the subject of the applicant's registered trade mark, simply because the service requires a person using it to use any form of software. Such a proposition, in my view, takes the applicant's statutory monopoly beyond that sanctioned by the Act .