A recent decision of the Federal Court creates a significant challenge for e-commerce businesses selecting a trade mark. In Bing! Software Pty Ltd v Bing Technologies Pty Limited (No 1)  FCA 1760, the court held that the trade marks were deceptively similar, even though the businesses were completely different, because:
- the plaintiff and defendant had similar sounding trade marks;
- their businesses both involved the use of computers;
- there was evidence of some people actually having been confused; and
- an expert witness gave evidence that the trade marks were likely to create confusion.
The business of the plaintiff was selling software. The defendant operated a business of accepting electronic documents to be posted using conventional mail, and provided printer driver software that allowed the user to "print" their documents to the service. The use of the name in relation to this driver software was held to infringe the trade mark of the plaintiff. This was so even though the driver existed to support the business and was not sold or marketed.
This is potentially a radical expansion of the scope of trade marks for online businesses. A court would be unlikely to have come to this conclusion because, for instance, both businesses involved were accessed by means of a door.
Given the expanding role of e-commerce, and the preparedness of a court to find that trade marks are deceptively similar based effectively on the combination of similar sounds and the common element of a computer being involved, businesses selecting a word or phrase to use as a trade mark should try to ensure their mark is as unique as possible across all computing and e-commerce businesses. Made up words of more than one syllable are usually the most effective means of creating a differentiated mark that is unlikely to be deceptively similar to another, but take care of the possiblity of alternative spellings.