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 late 2012.
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.
Background
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 and www.digitalpostaustralia.com.au. The website, as it appeared at the time of trial, can be viewed here.
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 services.
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 digital mail.
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 Post.
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 services
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 brands".
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 merit".
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.
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