The recent Federal Court decision in Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2)  FCA 862 demonstrates the difficulty of establishing trade mark infringement when the words comprising a well known registered trade mark are generally descriptive.
In this decision, the Australian Postal Corporation lost a claim for trade mark infringement against Digital Post Australia Pty Ltd (DPA) over the similarity of DPA's business name and proposed digital postal service with the registered Australia Post marks and digital postal service.
Generally, digital postal mail involves the delivery of what would otherwise be hard copy mail to a digital post box in electronic form.
"AUSTRALIA POST DIGITAL MAILBOX"
Australia Post is the registered owner of three AUSTRALIA POST word marks in respect of, amongst other things, mail delivery services, electronic mail delivery services, financial services including banking agency services, funds transfer services, credit services, billing services and bill payment services, and electronic mail and electronic communications services.
In April 2010, Australia Post announced its “Future Ready” business renewal strategy involving the launch of an online mail delivery and bill payment service known as a “digital mail box”.
On 16 March 2012 Australia Post applied to register the trade marks AUSTRALIA POST DIGITAL, AUSTRALIA POST DIGITAL MAILBOX and DIGITAL AUSTRALIA POST in various classes.
This service was finally launched on 26 March 2012 under the name AUSTRALIA POST DIGITAL MAILBOX.
"DIGITAL POST AUSTRALIA"
DPA is a joint venture company set up in September 2011 by Computershare Limited, Salmat Limited and an American corporation called Zumbox Inc. It was not until 14 March 2012 that DPA announced its own digital postal mail service to the public under the name "Digital Post Australia".
On 16 March 2012, DPA applied to register DIGITAL POST AUSTRALIA as a trade markin three of the same classes as were relevant to Australia Post’s applications.
Australia Post's arguments
Australia Post commenced proceedings in the Federal Court of Australia against DPA claiming trade mark infringement, contravention of the Australian Consumer Law and passing off. The crux of its claim was that DPA's use of the words “Post” and “Australia” next to one another, in respect of a service that was similar to its own digital postal service, was deceptively similar to the Australia Post Marks and would lead consumers to have cause to wonder whether DPA was in some way associated with Australia Post.
To this end, Australia Post argued that the word “post” is so very strongly associated with its own mail delivery services and brand extensions such as "Express Post", "Parcel Post" and "POSTbillpay" as to increase the likelihood of confusion.
Australia Post had sought to rely on the evidence of a marketing expert in conjunction with empirical support from two surveys it commissioned, which it argued demonstrated that many consumers confronted with the name DIGITAL POST AUSTRALIA would be caused to wonder about or to assume some sort of association between DPA and Australia Post.
Digital Post Australia responds
DPA did not deny that its use of "DIGITAL POST AUSTRALIA" was as a trade mark, but argued that the mark was visually and aurally distinct from the registered Australia Post marks. To this end, it contended that the word “DIGITAL” before the word “POST” acted as an important qualifier of the concept of “post” as it is traditionally understood.
DPA also argued that the class of consumer likely to use its digital mail services would have a heightened awareness of any differences between the marks, because of the care they would take in considering use of a digital mail service. In these circumstances the marks were not substantially similar.
Was there real, tangible danger of deception or confusion between the two marks?
Having considered the marks, both visually and aurally, and having considered the surrounding circumstances, Justice Marshall, concluded that there was no real, tangible danger of deception or confusion. The addition of the prefix “DIGITAL” and the different order of the words “POST” and “AUSTRALIA” in Digital Post's mark were sufficient to avoid that possibility.
Justice Marshall also concluded that both marks would convey different ideas to the consumer. The essential element of DPA's mark is the composite phrase "DIGITAL POST" which he concluded conveyed the idea of mail delivered in digital form. Absent the word "DIGITAL", the phrase "POST AUSTRALIA" (a reversal of AUSTRALIA POST) would convey little meaning to the ordinary consumer.
Potential consumers for digital mail services would likely be, in Justice Marshall's opinion, sufficiently astute in their selection of a digital mail service and discerning in their purchasing habits such that it is unlikely that they would confuse the two. Indeed it was for this same reason that he rejected much of the empirical and expert evidence relied upon by Australia Post but which did not otherwise focus on a class of persons that was confined to potential consumers.
This case demonstrates the difficulty faced when trying to establish trade mark infringement in respect of word marks that might otherwise be generally descriptive of the services to which they relate.
A competitor's use of words that comprise a registered trade mark will not necessarily constitute an actionable infringement, even when the goods and services to which they relate are identical to those for which the mark is registered, where the meaning of those words has arguably been changed.
As in this case, this change could be by adding to or altering the order of the words otherwise comprising the registered mark.
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