Full Court finds “Digital Post Australia” not deceptively similar to “Australia Post”

The Full Federal Court decision in Australian Postal Corporation v Digital Post Australia Pty Ltd [2013] FCAFC 153 has confirmed the Federal Court’s finding that by the use of “Digital Post Australia” there is no infringement of the registered trade mark “Australia Post”.

At first instance the primary judge found that neither “Digital Post Australia” nor www.digitalpostaustralia.com.au was deceptively similar to “Australia Post” and that the use of the name “Digital Post Australia” did not constitute misleading or deceptive conduct.  The primary judge also found that even if the marks were deceptively similar, Digital Post Australia had used its own name in good faith and to indicate the intended purpose of its services, and thus had a defence to infringement under section 122(1) of the Trade Marks Act.

Australia Post appealed the primary judge’s findings in respect of trade mark infringement, but did not press its claim of misleading or deceptive conduct.

One focus of the Full Court decision was whether in considering deceptive similarity, the primary judge’s classification of potential consumers as technologically competent and internet savvy was too narrow.  The Full Court stated:

In our opinion, the primary judge’s classification was too narrow. The evidence before the Court, led by [Digital Post Australia] itself, was that all persons in Australia (who relevantly pay bills) would be targeted for the digital service. The service was intended to be and was marketed to the general public, admittedly primarily to those who had (or would have) access to a digital mailbox. The relevant class of consumer is at the very least a member of the general public who has access to or could have access to a digital mailbox….

The correct approach is to consider whether a substantial or significant number of the general public potentially interested in a digital mailbox service would have cause to wonder if [Digital Post Australia]’s service was associated with Australia Post. We would not credit these consumers necessarily with habitual high perception or caution, or even treat them as “internet savvy”. Nor would we look to see whether Australia Post was associated in the minds of the general public with digital mail.

Despite this, the Full Court found that the primary judge did come to the correct conclusion in finding no deceptive similarity.  The Full Court stated that the primary judge correctly looked to the visual and aural composition of the marks to conclude that they were distinct and conveyed different ideas to the consumer. The Full Court dismissed the appeal and confirmed that even if infringement had been made out, Digital Post Australia had made out the good faith defences.