Australia Post loses its appeal against Digital

Australia Post loses its appeal against Digital
Post Australia
Lisa Lennon and Claire Bothwell GILBERT + TOBIN
This case is a reminder that the fame of an applicant’s
mark can be relevant to determining deceptive similarity
under s 120(1) and (2) of the Trade Marks Act 1995
(Cth) (the Act) and, in some cases, may result in an
adverse finding against the applicant. As in a handful of
cases before it, the fame of Australia Post’s trade mark
contributed to its failure to prove a likelihood of
confusion and deceptive similarity.
Australian Postal Corporation v Digital Post Australia1 was an appeal from the decision of Marshall J
concerning trade mark infringement.2 Australia Post
filed proceedings seeking to restrain Digital Post Australia (DPA) from marketing its digital post service
under the name DIGITAL POST AUSTRALIA. A digital post service involves the delivery of otherwise hard
copy mail to a digital postbox in electronic form.
Australia Post alleged that use of the mark DIGITAL
POST AUSTRALIA in relation to DPA’s digital post
service would infringe its trade mark registration for
AUSTRALIA POST under s 120(1) of the Act. It alleged
that the same conduct would amount to a breach of the
Australian Consumer Law (ACL) and passing off.
At first instance, Australia Post’s trade mark infringement claim failed, as Marshall J did not agree that
DIGITAL POST AUSTRALIA was deceptively similar
to AUSTRALIA POST. His Honour found that the prefix
DIGITAL and the reversed order of the words POST and
AUSTRALIA were sufficient to avoid deception or
confusion. While Australia Post had a statutory monopoly
over the delivery of parcels and letters, Marshall J did
not consider it to be associated in the minds of potential
customers with the delivery of digital mail. His Honour
considered that prospective consumers of a digital mail
service would be “technologically competent and internet
savvy” and careful in their selection of such a service.
Justice Marshall found that even though AUSTRALIA
POST was a distinctive and iconic mark, slight changes
to the mark would be noticed and consumers would
readily be able to distinguish DPA’s service from that of
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Australia Post, particularly given the latter’s status as
one of the best-known brands in Australia. Australia
Post’s ACL and passing-off claims also failed.
In coming to his conclusions on trade mark infringement, his Honour discounted the consumer survey evidence filed by Australia Post and evidence given by its
branding expert, in both cases because it focused on the
likelihood that consumers at large (rather than a narrower class of technologically competent consumers)
would be confused as to the origin of DPA’s services.
His Honour went on to find that DIGITAL POST
AUSTRALIA had been used in good faith by DPA to
indicate the intended purpose of the service (ie, a digital
mail service), so that even if the mark was found to be
deceptively similar to AUSTRALIA POST, DPA would
have a defence to infringement under s 122(1) of the
Act. Australia Post appealed Marshall J’s findings on
trade mark infringement.
A Full Court comprised of North, Middleton and
Barker JJ confirmed his Honour’s findings. The court
held that his Honour had correctly observed that the
marks were visually and aurally distinct, with the
essential element of DPA’s mark being the composite
phrase DIGITAL POST (which was descriptive and
conveyed the idea of mail delivered in a digital form).
Despite dismissing the appeal, the Full Court found that
Marshall J had considered a too narrow class for the
purpose of considering deceptive similarity (ie, internet
savvy and technologically competent consumers), given
DPA’s own evidence that it intended to market its service
to all Australian consumers. Notwithstanding the error,
the Full Court came to the same conclusion on deceptive
similarity.
The Full Court also discounted Australia Post’s
expert evidence regarding consumer confusion as to the
origin of DPA’s services, but on a different basis. Their
Honours considered that the main focus of the expert
evidence was not the word mark AUSTRALIA POST,
but a combination of the word POST, Australia Post’s
logo mark, and the red and white colours used in
Australia Post’s branding. Only some of these were
elements of the marks relied on by Australia Post to
intellectual property law bulletin
March 2014
prove infringement. The Full Court also gave no weight
to the consumer surveys. The respondents to the first
survey had previously participated in a survey known as
the “Australia Lifestyle Survey”, which had been sponsored by Australia Post. The Full Court considered that
these respondents were likely to have been exposed to
Australia Post’s branding and it could not discount the
fact that they had Australia Post in their mind when
completing the survey. The results of the second survey
were also discounted on the basis that Australia Post did
not provide any information on the method of recruitment of the respondents, and placed little weight on the
results of that survey at the trial.
This case is interesting, given that it is one in which
the fame of Australia Post’s trade mark contributed to its
failure to prove consumer confusion — at least in the
first instance (the Full Court did not expressly consider
this issue). The reputation or fame of a mark is generally
not relevant for assessing deceptive similarity for the
purposes of infringement under s 120(1) and (2) of the
Act, and has only been taken into account by the courts
in a very limited class of cases where the applicant’s
mark has a very strong reputation or is famous.3
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March 2014
Lisa Lennon
Partner
Gilbert + Tobin
[email protected]
www.gtlaw.com.au
Claire Bothwell
Lawyer
Gilbert + Tobin
[email protected]
www.gtlaw.com.au
Footnotes
1.
2.
3.
Australian Postal Corporation v Digital Post Australia [2013]
FCAFC 153; BC201315501.
Australian Postal Corp v Digital Post Australia Pty Ltd (No 2)
(2012) 293 ALR 369; 96 IPR 532; [2012] FCA 862; BC201206030.
For example, Registrar of Trade Marks v Woolworths Ltd
(1999) 93 FCR 365; 45 IPR 411; [1999] FCA 1020; BC9904205;
Coca-Cola Co v All-Fect Distributors Ltd (1999) 96 FCR 107;
47 IPR 481; [1999] FCA 1721; BC9908103; Mars Australia
Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354; [2009]
FCA 606; BC200904981.
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