news Australia Post has instituted legal proceedings against fledgling e-post joint venture Digital Post Australia with reference to the similarity in the name of the company with its own well-established brand. It has sought an injunction in the Federal Court to stop Digital Post Australia from using the name ‘Digital Post Australia’ for its digital mailbox service.
Digital Post Australia appeared at the Federal Court in Melbourne yesterday (Wednesday), to defend its right to use the name, which the company maintained, accurately reflected the nature of their business.
Australia Post spokesman Alex Twomey was quoted in the Daily Telegraph as saying: “We have no concerns with people having a digital mailbox; this is a market that will grow. The demand is there for it. We believe the use of the name Digital Post Australia is incredibly similar to ours and is leveraging the trust and brand that we have been building for some time.”
In a statement, David Hynes, chairman, Digital Post Australia said: “Our name says what we do – which is providing digital postal services to the people of Australia. We were the first in this market to launch digital post and we are best placed to provide this service, efficiently, securely and for free.”
Digital Post Australia asserted that its claim to deliver a free digital post box to all Australians was justified, since it already had a tried-and-tested solution rolled out successfully in other parts of the world. Having worked closely with the country’s biggest aggregators and backed by the top mailers in Australia, Digital Post Australia was confident that the process of allotting a digital mailbox to all of its consumers could be done seamlessly.
Digital Post Australia – a recently launched joint venture between Computershare, SALMAT and Zumbox promised a secure, online digital postbox where mail would be available digitally in one central location online. Australians would be able to receive postal mail online, compatible across major mobile platforms including iPhone, iPad and Android devices.
Subsequently, when Australia Post announced its own foray into the digital mailbox arena, the Australia Post Chairman David Mortimer stated: “The Australia Post Digital Mailbox will allow businesses, government entities and customers to communicate through a secure online portal that can be accessed 24 hours a day, 7 days a week, wherever they are.”
Digital Post Australia pointed out that the Australia Post announcement contained no details about how it intended to execute its plan. Most importantly, there was no mention of the technology it would employ to make it work.
Countering Digital Post Australia’s argument that Australia Post had not “announced any software partners as yet,” Twomey confirmed, in the Telegraph, that they were well advanced on technology and would be announcing something soon. Hynes remarked that it was interesting to note that when faced with competition, Australia Post chose to take the legal path.
In court this week, the first salvo in the battle appeared to have been won by Digital Post Australia. The organisation late yesterday issued a statement noting that it had successfully defended an application for an interlocutory injunction by Australia Post seeking to prevent the company using the name ‘Digital Post Australia’ until trial.
“Following today’s verdict at the Federal Court in Melbourne, Digital Post Australia will continue to use its name as it works towards providing a free and secure online digital post box for every Australian in the second half of 2012,” the startup wrote. “The trial of the proceeding will be finally determined by the Federal Court in Melbourne next month. In making his decision, the Federal Court judge found that on the question of whether Digital Post Australia was likely to mislead or deceive consumers in breach of the Competition and Consumer Act (Cth), Australia Post had “a weak case”.”
In my personal opinion, the name “Digital Post Australia” is definitely too similar to “Australia Post”, and Digital Post Australia is clearly leveraging Australia Post’s brand. Sure, there are many people (perhaps even the majority) who will understand the difference easily, but there are also many, many Australians who will simply assume that they are speaking to Australia Post, if they receive a call from “Digital Post Australia”.
I don’t know who’ll win the lawsuit, but it is common practice amongst startups to check carefully for existing brand names in their area before launching. Prior to launch, the principals of Digital Post Australia will have definitely had an internal conversation about the possibility of Australia Post complaining about the name — and this in itself is enough to demonstrate that the names are too similar.
Are these comments too harsh on Digital Post Australia? Possibly, but bear in mind that I also run a startup. It took me about 10 hours of thinking, researching and investigating before I could feel comfortable using ‘Delimiter’ as the name for my new publication. In creating a new brand, you have to be incredibly careful not to infringe on old ones, particularly ones that are household names, such as Australia Post. Digital Post Australia should have expected this to happen, and the one thing you don’t want to happen when you launch a startup is to attract legal action from a rival on day one.
Image credit: Australia Post. Opinion/analysis by Renai LeMay