FEDERAL COURT OF AUSTRALIA
Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153
Citation: Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153 Appeal from: Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 Parties: AUSTRALIAN POSTAL CORPORATION (ABN 28 864 970 579) v DIGITAL POST AUSTRALIA PTY LTD (ACN 152 998 715) File number: VID 645 of 2012 Judges: NORTH, MIDDLETON AND BARKER JJ Date of judgment: 6 December 2013 Catchwords: INTELLECTUAL PROPERTY – trade marks – whether infringement – whether trade mark deceptively similar – relevance of context – surrounding circumstances – whether use of name “in good faith” – survey and expert evidence Legislation: Competition and Consumer Act 2010 (Cth)
Trade Marks Act1995 (Cth)Cases cited: Anheuser-Busch Inc v Budejovicky Budvar (2002) 56 IPR 182
Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862
Australian Woollen Mills Ltd v FS Walton Stores & Co Ltd (1937) 58 CLR 641
Baume & Company Ltd v AH Moore Ltd [1958] Ch 907
Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536
Johnson & Johnson Aust Pty Ltd v Sterling Pharmaceuticals Pty Ltd (1991) 30 FCR 326
Re an Application by the Pianoist for the Registration of a Trade Mark (1906) 1A IPR 379
REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365
Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592Date of hearing: 15th and 16th May 2013 Place: Melbourne Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 97 Counsel for the Appellant: Mr R Garratt QC with Dr W Rothnie Solicitor for the Appellant: Allens Counsel for the Respondent: Mr C Golvan SC with Mr T Cordiner Solicitor for the Respondent: K & L Gates
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 645 of 2012
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA
BETWEEN: AUSTRALIAN POSTAL CORPORATION
(ABN 28 864 970 579)
AppellantAND: DIGITAL POST AUSTRALIA PTY LTD (ACN 152 998 715)
Respondent
JUDGES:
NORTH, MIDDLETON AND BARKER JJ
DATE OF ORDER:
6 DECEMBER 2013
WHERE MADE:
MELBOURNE
THE COURT ORDERS THAT:
1.The parties, within seven days, confer and provide to the Court a minute of order reflecting these reasons and dealing with costs, or, in the event of any disagreement, each party file and serve a short written submission as to the appropriate orders.
Note:Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
IN THE FEDERAL COURT OF AUSTRALIA
VICTORIA DISTRICT REGISTRY
GENERAL DIVISION
VID 645 of 2012
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA
BETWEEN: AUSTRALIAN POSTAL CORPORATION
(ABN 28 864 970 579)
AppellantAND: DIGITAL POST AUSTRALIA PTY LTD (ACN 152 998 715)
Respondent
JUDGES:
NORTH, MIDDLETON AND BARKER JJ
DATE:
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Details
- Case
- [2013] FCAFC 153
- Decision Date
CaseChat Overview and Summary
The case of Australia Postal Corporation v Digital Post Australia involved a dispute between Australia Post and Digital Post Australia regarding the alleged infringement of trade marks. Australia Post, the appellant, contested the primary judge’s findings in respect of the Trade Marks Act 1995 (Cth). The legal issues centred on whether Digital Post Australia’s use of its name and domain constituted an infringement of Australia Post’s registered trade marks, specifically whether the marks were deceptively similar and whether Digital Post Australia used the name in good faith. The primary judge concluded that the marks were not deceptively similar, considering the visual and aural differences between the marks, the distinct ideas they conveyed, and the technological competence of the potential audience for digital mail services. Furthermore, the primary judge found that Digital Post Australia used the name in good faith. The Court of Appeal upheld the primary judge’s findings, accepting that the evidence supported the conclusions on good faith and that the findings on deceptive similarity were open to the primary judge.
The Court of Appeal dismissed the appeal brought by Australia Post. In its judgment, the Court highlighted the importance of considering the marks in their entirety and the surrounding circumstances, including the technological competence of the audience and the distinctive nature of Australia Post’s brand. The Court found that the primary judge’s assessment of the evidence, particularly the expert evidence on branding, was appropriate and that the conclusions drawn were supported by the evidence. The Court also noted that the primary judge had correctly considered the good faith use of the name by Digital Post Australia. Consequently, the appeal was dismissed, and the parties were directed to confer on the costs or, if necessary, to submit written arguments on the appropriate orders regarding costs.
The Court of Appeal dismissed the appeal brought by Australia Post. In its judgment, the Court highlighted the importance of considering the marks in their entirety and the surrounding circumstances, including the technological competence of the audience and the distinctive nature of Australia Post’s brand. The Court found that the primary judge’s assessment of the evidence, particularly the expert evidence on branding, was appropriate and that the conclusions drawn were supported by the evidence. The Court also noted that the primary judge had correctly considered the good faith use of the name by Digital Post Australia. Consequently, the appeal was dismissed, and the parties were directed to confer on the costs or, if necessary, to submit written arguments on the appropriate orders regarding costs.
Orders
Orders of the court
1. The parties, within seven days, confer and provide to the Court a minute of order reflecting these reasons and dealing with costs, or, in the event of any disagreement, each party file and serve a short written submission as to the appropriate orders.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
The Appellant (‘Australia Post’) is now only challenging the primary judge’s findings in respect of the TM Act. We confine our attention to that contest.BACKGROUND Since 30 August 1995, Australia Post has been the registered owner of trade mark No 759014 for ‘AUSTRALIA POST’ for mail delivery services, electronic mail delivery services and electronic mail communications services including e-mail, facsimile services and telegraph services. Since 11 August 2009, Australia Post has been the registered owner of trade mark No 1314374 for ‘AUSTRALIA POST’ in respect of financial services including banking agency services, funds transfer services, credit services, billing services and bill payment services including by telephone and internet. Since 25 August 2009, Australia Post has been the registered trade mark owner of trade mark 1317044 for ‘AUSTRALIA POST’ in respect of telecommunications services, electronic mail and electronic communication services, 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. On 14 March 2012 DPA announced that it would be launching a digital mail box service under the name ‘Digital Post Australia’ using the domain name ‘ A` ‘digital mail box’ allows for customers to receive ‘digital mail’. Digital mail differs from email, most significantly in that a sender cannot post to a digital mail box without first being authorised by the owner of the mail box. This service has been primarily pitched as a means of financial institutions and utility providers communicating with their customers and allowing for bill payments and the like. On 26 March 2012 under the name ‘AUSTRALIA POST DIGITAL MAILBOX’, Australia Post launched its digital mail box service. The marketing of this service, upon the evidence presented by DPA, was to provide a digital mail service for every Australian, and to all consumers across Australia. On 27 March 2012, Australia Post commenced proceedings against DPA alleging that ‘Digital Post Australia’ and ‘ were deceptively similar to their trade marks.THE PRIMARY JUDGE’S REASONS The primary judge held at [14] that ‘digital postal mail’, ‘digital post’, ‘digital mail’, and ‘digital post service’ were generically used to refer to the digital mailbox service described above. In relation to whether or not ‘DIGITAL POST AUSTRALIA’ was deceptively similar to Australia Post’s trade marks the primary judge came to the following conclusions:[56] 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. 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. [57] 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. The marks are visually and aurally distinct. They also convey different ideas to the consumer. The case of Health World Ltd v Shin-Sun Australia Pty Ltd [2005] FCA 5; (2005) 64 IPR 495 is instructive in this context. In that matter, Cooper J considered whether the marks HEALTHPLUS and INNER HEALTH PLUS were deceptively similar. As in this case, a descriptive word (“INNER”) had been added to prefix another existing two word mark (“HEALTH PLUS”). His Honour considered that the addition of the first word resulted in a substantial difference in meaning between the two marks. His Honour held there was no deceptive similarity even though the order of the second two words was not reversed. Jacobson J compared the marks again in Health World Ltd v Shin Sun Australia Pty Ltd [2008] FCA 100; (2008) 75 IPR 478 at [138] and found that:the impression that the person of ordinary intelligence and memory would have of the Inner Health Plus mark is that of the dominant name and phrase, Inner Health...No such impression is created by the look or appearance of the trade mark HealthPlus...[which] is concerned with general health and well-being. Similarly in this case, the essential element of DPA’s mark is the composite phrase “Digital Post” which conveys the idea of mail delivered in a digital form. The phrase “POST AUSTRALIA” which reverses “AUSTRALIA POST” in DPA’s mark would convey little meaning to the ordinary consumer in the absence of the preceding word.[58] The lack of deceptive similarity in the present case is even more apparent when one considers the surrounding circumstances which the Court must take into account. As Windeyer J said in Shell at 416:the deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.[59] 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. Even in the context of a trade mark dispute concerning gourmet cheese, Middleton J in Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd & Another [2010] FCA 1367; (2010) 191 FCR 297 considered at [278] that consumers were likely to:at least take some care in choosing the product they intend to purchase. The consumer of this type of product is likely to be astute as to the characteristics of the product, and discerning in his or her purchasing habits.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. Although the name AUSTRALIA POST is entirely descriptive of its mail delivery services, it has become distinctive and iconic though extensive and prolonged use. In such circumstances, potential consumers of digital post services will perceive and pay attention to even slight changes to the mark. I find that the mark DIGITAL POST AUSTRALIA is not deceptively similar to the mark AUSTRALIA POST.
Evidence
Evidence Before The Court
We turn to the evidence before the primary judge.Dr Downes’ expert evidence Dr Downes was an expert on branding with extensive academic and professional experience in branding. He was instructed by the Australia Post to provide an expert report on whether, in his opinion, consumers would be confused as to the origin of DPA’s service. DPA objected to the report being admitted at trial on the basis that the issue of confusion is a question for the Court and the report had very little probative value. The primary judge admitted the report but said he would give it weight commensurate with its relevance. As noted above, the primary judge discounted the report on the basis that it was focussed on consumers at large rather than the relevant consumers for the purposes of confusion. It is necessary to refer to Dr Downes’ analysis in some detail to understand the context in which it was given and its intended focus. Dr Downes’ analysed Australia Post’s marks as follows:QUESTION 6: WHAT ARE THE ELEMENTS OF THE APPLICANT’S BRAND? TO WHAT EXTENT (IF AT ALL) ARE THOSE ELEMENTS ASSOCIATED WITH THE APPLICANT?78 Based on my review of the materials provided to me by King & Wood Mallesons and my own observations as a marketer and brand strategist, the following are used by the Applicant as brand elements and are likely to be perceived by Australian consumers as elements of the Applicant’s brand:78.1 The name “Australia Post”;78.2 The word “Post”;78.3 The Applicant’s “master brand” logo; and78.4The colour red and the colour scheme or combination of red and white.79 The first brand element is the name “Australia Post”, which the Applicant has used since 1975. Given the ubiquity of the brand, the length of time over which the name has been used, and the frequency of contact that Australian consumers are likely to have had with the Applicant’s services, this name – as spoken and as a plain word mark, as well as in graphic form – is likely to be one of the most recognised brand names in Australia.80 The second brand element is the word “Post”, independent of the word “Australia” and of any particular graphic or typographic style. The strength of the word “Post” as a brand element, and the presence of independent brand equity in the word “Post”, are clearly apparent from the way in which “Post” has been used by the Applicant as the basis for successful extensions or sub-brands including “Post Shop”, “Express Post”, “Print Post” and “PostBillPay” over many years. Further, the dominant visual feature of the Applicant’s “master brand” logo (as to which, see below) is the word “Post” in a bold, heavy typeface; the word “Australia” is presented in a much smaller, lighter and more condensed font than “Post”. Therefore, I consider it likely that Australian consumers have a common understanding of the word “Post” as referring to a single, specific and official government or semi-government service. In addition, I note that:80.1 The word “Post” has been used continuously and consistently by the Applicant as a brand element in respect of a broad range of goods and services since 1975;80.2 The word “Post” has been used as a brand element in a large number of brand extensions launched by the Applicant in respect of a broad range of services since that time; and80.3 The idea of the word “Post” as denoting goods and services from a particular origin is also encapsulated in familiar phrases and concepts such as “in the post”, the “postman” or “postie”, and “post box”, each of which is likely to be clearly understood by the majority of Australians as referring to the Applicant and its services.81 It is also significant in my opinion that Australian consumers do not use the word “Post” in relation to other forms of direct personal communication and the sending of packages, parcels and documents. For Example:81.1 I am not aware of any consumers who say they “post” an email. This again, in my opinion, reinforces the distinctive nature of the association between the word “Post” and the Applicant and its “Australia Post” brand.81.2 Consumers in my experience clearly differentiate “post” and “postal services” from other carriers of parcels and services through the use of terms such as “courier” services and “shipping”. I cannot recall having heard a consumer refer to a parcel shipped via Federal Express or a package delivered by a courier as having come “in the post”. Once again, in my opinion, this reinforces the strong and distinctive nature of the perceived association between the word “Post” and the Applicant and its “Australia Post” brand.
Decision
Reasons for decision
The findings of the primary judge at [66]-[71] dealing with good faith were open to him. As we have said above in discussing the evidence of Mr Hynes, his evidence was accepted and was a proper basis for the primary judge’s conclusions on good faith.CONCLUSION For the above reasons, we will dismiss the appeal. As there may be an issue as to costs, we will direct that the parties within seven days confer and provide to the Court a minute of order reflecting these reasons and dealing with costs, or in the event of any disagreement, each party file and serve a short written submission as to the appropriate orders.
Ratio Decidendi
Legal Principle Established
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