Case: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1
Outcome: distinguished
The fact that both marks include the same word does not conclusively mean that the marks are "substantially identical": Marc A Hammond Pty Ltd v Papa Carmine Pty Ltd (1973) 28 FLR 160; Angove's Pty Ltd v Johnson (1983) 66 FLR 216. Indeed, the fact that the Bing Trade Mark is written in capital letters, and the first respondent's mark is not, suggests that the two marks are not substantially identical: SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1 at 11. 46 In reply, the respondents submitted in summary: &#8226; The applicant fixes upon the fact that the first respondent provides, as part of its postal service, software to customers. To accept the applicant's case would be to accept that it has a monopoly in the use of the name "bing" as a trade mark in respect of any service which provides software even though the provision of that software is ancillary to the actual service acquired by customers. This approach has been rejected by the courts. &#8226; Although the first respondent is actually engaged in the provision of postal services , the applicant is trying to elevate those services to that of provision of computer software, relying upon the incidental use of that software in the conduct of the first respondent's business. That is an incorrect approach and contrary to binding authority on this Court. &#8226; This case is very similar to that in SAP Australia Pty Ltd v Sapient Australia Pty Ltd [1999] FCA 1821 ; (1999) 169 ALR 1. &#8226; The applicant is trying to distract the court by the fact that the services or goods offered by the parties might have some features in common. The Court should not be distracted by the fact that, in part, the services or goods provided by the first respondent involves the provision of software to its customers. &#8226; In any event, on the morning of the second day of the trial the first respondent provided an open undertaking to the Court that it would not use the word "bing" either by itself or in combination with any other words in directly referring to the software it provides to its customers. 50 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. 58 The respondents also submitted that the facts of this case parallel those in SAP Australia [1999] FCA 1821 ; 169 ALR 1. In SAP Australia [1999] FCA 1821 ; 169 ALR 1 the first appellant, a subsidiary of a German company (the second appellant), had traded in Australia since 1989, and distributed computer software products of the second appellant in Australia. The first appellant had also established a training college under the name "Sapient College". The second appellant had registered in Australia the trade marks SAP and SAPIENT COLLEGE in respect of Class 41: Education; providing of training; cultural activities; the foregoing including post graduate, further and advanced education and training in business, business management, management, business administration, computers, computer peripherals and computer software, information technology, intellectual property, telecommunications, science and technology, medical technology and science, technology management, stress management and therapy, personal development, lifestyle, relaxation and remedial techniques. 59 The respondent was incorporated in Australia in 1998 and provided custom-designed computer systems for clients and some ancillary training. The appellants alleged infringement by the respondent of the registered trade marks, misleading or deceptive conduct in contravention of s 52 TPA, and passing off. The action at first instance was dismissed. 61 Where the analogy between these proceedings and SAP Australia [1999] FCA 1821 ; 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. 70 Relevant principles in the context of claimed breach of s 52 , as explained by the Full Court in SAP Australia [1999] FCA 1821 ; 169 ALR 1 at 14, include the following: &#8226; Initial confusion is sufficient and it is not necessary for confusion to induce or be likely to induce a transaction. Conduct which misleads a customer so that, under some mistaken impression of a trader's connection or affiliation, he or she opens negotiations or invites approaches may be misleading or deceptive even if the true position emerges before the transaction is concluded. &#8226; However, each case depends on its own facts and conduct may not be misleading or deceptive or likely to mislead or deceive, notwithstanding that it may engender temporary and commercially irrelevant error (cf Knight v Beyond Properties Pty Ltd [2007] FCAFC 170 at [56] ; Hansen Beverage Company v Bickfords (Australia) Pty Ltd [2008] FCAFC 181 at [41] ). &#8226; Characterisation of conduct as "misleading or deceptive or likely to mislead or deceive" involves a judgment of a notional cause and effect relationship between the conduct and putative consumer's state of mind. 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 .