Australia Post fails to obtain injunction against digital mail company
In Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) ( FCA 862, August 17 2012), the Federal Court of Australia has dismissed Australia Post’s application for an injunction to restrain Digital Post’s use of the mark DIGITAL POST AUSTRALIA in relation to electronic mail delivery services.
Australia Post’s primary allegation was the infringement of its registered trademark AUSTRALIA POST by Digital Post. In addition, Australia Post also alleged contraventions of Sections 18, 29(1)(a), 29(1)(g) and 29(1)(h) of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010), as well as passing off.
Australia Post’s principal function is the supply of postal services within Australia and overseas. Importantly, its functions also include the carrying on of any business incidental to that principal function, such as supplying email and/or bill payment services.
Australia Post is the owner of three trademark registrations for AUSTRALIA POST in respect of, among other things, mail delivery services, electronic mail delivery services and electronic mail communications services, including email, facsimile services and telegraph services.
On March 14 2012 Digital Post announced its plans to provide digital postal mail services in Australia under the name Digital Post Australia. Digital postal mail involves the delivery of what would otherwise be hard copy mail to a digital post box in electronic form and accessible by the addressee through the internet. Digital mail therefore differs from email. Significantly, digital mail technology enables addressees to control the mail they receive because a sender cannot post a letter to a digital mail box without first being authorised to do so by the owner of the mail box. Further, since mail is sent to a digital mailbox in an electronic form, it can carry embedded links which the addressee can follow to linked websites. This allows for bill payment and other online activities.
The primary issue for determination was whether the trademark DIGITAL POST AUSTRALIA was “deceptively similar” to the trademark AUSTRALIA POST - that is, did the mark so nearly resemble AUSTRALIA POST that it was likely to deceive or cause confusion? Australia Post submitted that there was a real risk that consumers would be deceived or confused by the mark DIGITAL POST AUSTRALIA because of the use of the words 'Post' and 'Australia' adjacent to one another. It argued that confusion would be even more likely (despite the descriptive nature of the words) because the word 'post' is strongly associated with Australia Post’s mail delivery services and the brand extensions such as Express Post, Parcel Post and POSTbillpay.
The court considered a number of the authorities on this issue, in particular Health World Ltd v Shin-Sun Australia Pty Ltd ((2005) 64 IPR 495), in which the marks HEALTHPLUS and INNER HEALTH PLUS were held not to be deceptively similar. As in the present case, a descriptive word ('inner') had been added to prefix another existing word mark (HEALTH PLUS) and the court in that case thought that the addition of word 'inner' resulted in a substantial difference in the meaning conveyed by the two marks.
Having regard to this and other authorities, the court was of the opinion that the addition of the word 'digital' and the different order of the words 'post' and 'Australia' were sufficient to avoid deception or confusion because the marks are both “visually and aurally distinct” and they convey “different ideas to the consumer”. Indeed, the court expressed the opinion that "[i]t is difficult to imagine that anyone who is competent with computer technology will have any doubt that Digital Post Australia is separate and distinct from Australia Post”.
This conclusion, in essence, also disposed of the related allegations under the Australian Consumer Law and passing off. However, it is worth noting that the court, in its additional reasons for dismissing these aspects of the case, thought that it was “significant” that Australia Post does not currently offer a digital mail service and, therefore, had no existing reputation in a digital mail service. Quite the opposite, the court noted that Australia Post is strongly associated with physical mail services and, as a consequence, members of the public would not be misled into thinking that a digital mail service offered under the name Digital Post Australia would be a digital mail service of Australia Post.
Julian Gyngell, Kepdowrie Chambers, Wahroonga
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