On 17 August 2012, the Federal Court gave the green light for
the launch of a digital mail service under the name "Digital
Post Australia" after dismissing allegations of trade mark
infringement made by Australia Post.
The Court ruled that Digital Post Australia Pty Ltd (DPA) had
acted in good faith in choosing its name for a digital postbox
which will be provided free of charge to Australian consumers in
DPA will provide consumers with the ability to receive and store
bills in a secure online postbox. Unlike email, digital post is a
closed system meaning that the consumer must approve all senders.
Consumers will be able to receive a replica of their physical bills
with features allowing for bill payment reminders and storage of
other important documents.
DPA is a joint venture between Australian companies
Computershare Limited and Salmat Limited and their United States
based software partner Zumbox.
In March, DPA and its joint venture partners announced the
proposed service to the Australian Stock Exchange (ASX) and
potential customers. Since that time the DPA service has been
marketed from a website hosted at the domain names, www.digitalpost.com.au
The website, as it appeared at the time of trial, can be viewed
In late March, Australia Post initiated proceedings in the
Federal Court alleging that DPA had infringed Australia Post's
registered trade marks, engaged in breaches of the Australian
Consumer Law and passed off Australia Post's goodwill and
reputation. It also alleged that Salmat and Computershare had aided
and abetted this conduct.
In April, DPA was successful in defending an application by
Australia Post to temporarily restrain DPA from using its name
pending a final ruling in the proceeding.
Trade mark infringement
Australia Post had alleged that the name "Digital Post
Australia" infringed three registered trade marks for
"Australia Post" which are registered in respect of
various postal, electronic mail delivery and bill payment
The Court found that while Australia Post has a statutory
monopoly over the physical delivery of letters, it is not yet
associated in the minds of potential consumers with the delivery of
In comparing the marks, the Court found that it was difficult to
imagine that anyone who is competent with computer technology would
have any doubt that DPA was separate and distinct from Australia
The Court concluded that there was no real, tangible danger of
deception or confusion and that the ordinary consumer would not
entertain a reasonable doubt about the origin of DPA's
Having found that DPA was not liable for trade mark
infringement, the Court went on to find that DPA had used its own
name in good faith to indicate the intended purpose of its service.
The name was based on consumer research which indicated that
branding for the new service should be functional, practical and
descriptive. The Court accepted the evidence of DPA Chairman David
Hynes that "the name was chosen without any desire to be
associated with Australia Post or to 'leverage' any of its
Misleading and deceptive conduct and passing off
Australia Post also alleged that DPA engaged in misleading and
deceptive conduct and made false or misleading representations that
it was affiliated with Australia Post by marketing the proposed
service from the DPA website. The Court dismissed the claims under
the Australian Consumer Law as "without
The Court heard evidence that the Australia Post masterbrand
which is predominantly red, is used on all external communications
of Australia Post. By contrast, the dominant colour of DPA's
logo is blue. The Court found that it would run counter to what
consumers would ordinarily expect for Australia Post to launch a
new business without using key features of its masterbrand and
instead to launch such a service using very different branding
features. Given that the Australia Post brand is "so well
known and iconic" it would be difficult for consumers to
confuse the branding of DPA and Australia Post "unless they
were exceedingly careless".
The Court also dismissed allegations that DPA had engaged in the
tort of passing off.
Liability of Salmat and Computershare
Australia Post also alleged that Salmat and Computershare had
aided and abetted or otherwise been knowingly involved in the trade
mark infringement, passing off and Australian Consumer Law
breaches which were alleged against DPA.
The Court held that there was "no intention on the part of
DPA and the other respondents to 'cash in' on the
reputation of Australia Post". The claims against Salmat and
Computershare were dismissed.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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