news The Federal Court has dismissed a lawsuit brought by Australia Post 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.
Digital Post Australia – a recently launched joint venture between Computershare, SALMAT and Zumbox promises to offer 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.
However, after the group launched in March, Australia Post kicked off legal proceedings in the Federal Court, seeking an injunction to stop Digital Post Australia from using the name ‘Digital Post Australia’ for its digital mailbox service. Australia Post has also launched its own digital mailbox plan.
In a statement issued this morning, Digital Post Australia said that all of Australia Post’s claims — including trademark infringement, misleading and deceptive conduct and passing off had been dismissed, with Australia Post also being ordered to pay Digital Post Australia’s legal costs.
The Court found, according to Digital Post Australia, that Australia Post’s allegations of misleading and deceptive conduct, were “without merit” and further said: “It is difficult to imagine that anyone who is competent with computer technology will have any doubt that Digital Post Australia is separate and distinct from Australia Post.”
“We are very pleased with the Court’s decision,” said David Hynes, chairman of Digital Post Australia. “Throughout these proceedings we have remained focused on moving our business forward and have made substantial progress toward reaching our business objective of delivering the first and best digital postal service to Australians. We expect to announce some important developments in the coming weeks that will further demonstrate the strength of our market position.”
Salmat and Computershare, two of Australia’s largest customer communications companies, have recently completed integration with Digital Post Australia. With the completion of this integration, mail senders can “quickly and easily” deploy this dynamic channel, according to Digital Post Australia and realise “the many economic and consumer benefits of digital postal mail”.
Through Digital Post Australia, consumers will soon be able to receive their essential mail digitally in one central, online and secure location. The service will make it “simple and convenient to organise”, manage, pay and store consumer mail. The service is expected to launch later this year.
“Having compared the two marks visually and aurally and considered the relevant surrounding circumstances, I do not consider that there is a real, tangible danger of deception or confusion occurring as a consequence of DPA adopting the mark Digital Post Australia,” wrote Justice Marshall in their judgement. “I do not believe that the ordinary consumer might be caused to wonder whether the digital mail services proposed to be operated by DPA come from the same source as the digital mail services proposed to be offered by Australia Post. The ordinary consumer would not entertain a reasonable doubt about the matter.”
“The trade marks will be used in connection with digital mail services. Australia Post has a statutory monopoly over the delivery of letters and parcels. It is not yet associated in the minds of potential customers with the provision of digital mail. The potential audience for digital mail services is likely to be technologically competent and internet savvy. Members of that class will almost certainly be careful and astute in their selection of a digital mail service.”
I wrote the following when this lawsuit was initiated several months ago, and I still stand by it as my opinion about this 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.”
However, it appears the Federal Court disagrees — and on more rational, evidence-based grounds than my casual opinion ;)
Image credit: Australia Post