Wednesday, 29th August, 2012
Australia Post's loss against digital rival raises questions for "iconic" brands
The Federal Court of Australia has dismissed a trade mark case brought by Australia Post against newcomer Digital Post Australia, in a decision that makes interesting reading for owners of well-known and "iconic" brands.
The Federal Court of Australia has dismissed a trade mark case brought by Australia Post against newcomer Digital Post Australia, in a decision that makes interesting reading for owners of well-known and "iconic" brands. It will also affect owners of brands that are less inherently distinctive, but have become well-known and distinctive through use.
In Australian Postal Corporation v Digital Post Australia Pty Ltd  FCA 862, official Australian mail carrier Australia Post brought infringement and consumer law claims against Digital Post Australia, claiming deception and confusion were likely to arise from the use of the name DIGITAL POST AUSTRALIA in relation to digital mail. Digital mail - not to be confused with email - delivers hard copy mail to a digital post box in electronic form, accessible through the internet. The addressee gets an electronic version of the physical letter which is stored in their own secure digital post box.
Australia Post contended that its own strong reputation in the name AUSTRALIA POST made it likely the name DIGITAL POST AUSTRALIA would mislead or deceive consumers, who would believe it was an official postal service, or a service of or associated with Australia Post.
In comparing the marks AUSTRALIA POST and DIGITAL POST AUSTRALIA, it was undisputed that Australia Post was one of the "oldest and best known brands in Australia" with an "iconic reputation in its name in respect of the delivery of physical mail".
Interestingly though, Marshall J held that because Australia Post's marks were so well-known for mail services, "potential consumers of digital post services will perceive and pay attention to even slight changes to the mark". "The addition of the prefix "DIGITAL" and the different order of the words "POST" and "AUSTRALIA" in DPA's mark are sufficient to avoid deception or confusion." This raises some interesting questions for owners of other "iconic" marks. Generally swapping the order of words in a trade mark would not be enough to avoid infringement, but it is a case by case analysis.
The case also raises questions about the relevant consumers of physical versus digital mail. Australia Post's registrations cover "electronic mail, computer-based and computer-aided communications and the transmission of information, data, documents, text, messages, images and sound, including electronic transmission of publications and online forms", as well as what were described as "traditional" mail services, and the company has been developing its own digital mail platform.
Despite this, it was held that Australia Post is "not yet associated in the minds of potential customers with the provision of digital mail". It was noted that "the potential audience for digital mail services is likely to be technologically competent and internet savvy". This may be true, but it is also true that today's general public is technologically competent and internet savvy. Australia Post's survey evidence was criticised because it was not confined to potential users of the proposed digital mail service, who were seen to be different in some way from consumers of "traditional" mail services.
Australia Post said in an email statement after the decision that it was disappointed with the ruling, and would "take time to consider the judgement and our appeal to prevent third parties from using an Australian owned, trusted brand for their commercial gain".