Marshall J of the Federal Court of Australia ruled on 17 August
2012 that the trademarks AUSTRALIA POST and DIGITAL POST AUSTRALIA
are not deceptively similar when used in relation to digital mail
services, that is, for "the delivery of what would otherwise
be hard copy mail to a digital post box in electronic form,
accessible to the addressee through the internet" (Australian
Postal Corporation v Digital Post Australia Pty Ltd (No 2) 
FCA 862 (17 August 2012)).
Accordingly, Digital Post Australia Pty Ltd
(DPA) did not infringe the AUSTRALIA POST
registrations covering inter alia postal communications
including computer-aided communications and bill paying and related
services. Digital mail technology differs from electronic mail
because the addressee must first agree to receive the mail and
because it can contain embedded links that allow, for example, the
payment of bills, voting or similar activities. The related claim
for passing off at common law was dismissed because there was no
demonstrated reputation in the AUSTRALIA POST mark for digital mail
services. For this reason, the additional claim that DPA had
engaged in conduct likely to mislead or deceive consumers was also
Australian Postal Corporation, known as Australia Post, is a
statutory corporation with a monopoly in mail delivery services
within Australia but also competes with commercial organisations
for related services, such as parcel delivery and electronic
messaging services. Its AUSTRALIA POST trade mark enjoys
"iconic reputation" in relation to physical mail services
and is one of Australia's "best known brands". Though
in the pipeline for some time, Australia Post did not launch its
digital mail delivery and bill paying service until 26 March 2012
under the trade mark AUSTRALIA POST DIGITAL MAILBOX. This was
nearly two weeks after the announcement to the public of the
DIGITAL POST AUSTRALIA service on 14 March 2012. Evidence showed
that DPA was aware of the AUSTRALIA POST registrations but adopted
DIGITAL POST AUSTRALIA because the service should be branded
"as functionally as possible" since the nationwide
service needed to be "very utilitarian and therefore
Deceptive similarity is determined by gauging in all the
circumstances whether there is a reasonable probability of
deception or confusion or a real tangible danger of it amongst a
substantial number of average consumers, that is, whether the
public is left wondering if services provided under the two marks
are related. Marshall J did not think that ordinary consumers would
entertain a reasonable doubt that both brands indicated a common
trade source. The "essential element" of DIGITAL POST
AUSTRALIA resided in the words DIGITAL POST, which described the
service. The words POST AUSTRALIA (reversing AUSTRALIA POST) were
said to convey very little meaning without the preceding word
DIGITAL. The marks were in some way similar but the effect of that
similarity determined whether they were deceptively similar. In the
context of a computer literate target market, it was hard to
imagine that anyone would entertain the relevant doubt.
The survey evidence was dismissed as unhelpful because the
sample range was not confined to potential user of the service but
included consumers generally.
Clayton Utz communications are intended to provide
commentary and general information. They should not be relied upon
as legal advice. Formal legal advice should be sought in particular
transactions or on matters of interest arising from this bulletin.
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