07 September 2012

Deceptively similar trade marks? Australian Postal Corp v Digital Post Australia Pty Ltd (No 2)

Brett Doyle

Marshall J of the Federal Court of Australia ruled on 17 August 2012 that the trademarks AUSTRALIA POST and DIGITAL POST AUSTRALIA are not deceptively similar when used in relation to digital mail services, that is, for "the delivery of what would otherwise be hard copy mail to a digital post box in electronic form, accessible to the addressee through the internet" (Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 (17 August 2012)).

Accordingly, Digital Post Australia Pty Ltd (DPA) did not infringe the AUSTRALIA POST registrations covering inter alia postal communications including computer-aided communications and bill paying and related services. Digital mail technology differs from electronic mail because the addressee must first agree to receive the mail and because it can contain embedded links that allow, for example, the payment of bills, voting or similar activities. The related claim for passing off at common law was dismissed because there was no demonstrated reputation in the AUSTRALIA POST mark for digital mail services. For this reason, the additional claim that DPA had engaged in conduct likely to mislead or deceive consumers was also dismissed.

Australian Postal Corporation, known as Australia Post, is a statutory corporation with a monopoly in mail delivery services within Australia but also competes with commercial organisations for related services, such as parcel delivery and electronic messaging services. Its AUSTRALIA POST trade mark enjoys "iconic reputation" in relation to physical mail services and is one of Australia's "best known brands". Though in the pipeline for some time, Australia Post did not launch its digital mail delivery and bill paying service until 26 March 2012 under the trade mark AUSTRALIA POST DIGITAL MAILBOX. This was nearly two weeks after the announcement to the public of the DIGITAL POST AUSTRALIA service on 14 March 2012. Evidence showed that DPA was aware of the AUSTRALIA POST registrations but adopted DIGITAL POST AUSTRALIA because the service should be branded "as functionally as possible" since the nationwide service needed to be "very utilitarian and therefore trustworthy".

Deceptive similarity is determined by gauging in all the circumstances whether there is a reasonable probability of deception or confusion or a real tangible danger of it amongst a substantial number of average consumers, that is, whether the public is left wondering if services provided under the two marks are related. Marshall J did not think that ordinary consumers would entertain a reasonable doubt that both brands indicated a common trade source. The "essential element" of DIGITAL POST AUSTRALIA resided in the words DIGITAL POST, which described the service. The words POST AUSTRALIA (reversing AUSTRALIA POST) were said to convey very little meaning without the preceding word DIGITAL. The marks were in some way similar but the effect of that similarity determined whether they were deceptively similar. In the context of a computer literate target market, it was hard to imagine that anyone would entertain the relevant doubt.

The survey evidence was dismissed as unhelpful because the sample range was not confined to potential user of the service but included consumers generally.

This article was first published in the International Trademark Association Bulletin

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