Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2): Trade Marks

In the recent case of Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 (17 August 2012) the communications and technology companies Computershare and Salmat  managed to successfully defended claims by Australia Post that their joint venture known as “Digital Post Australia”  infringed the trademarks of Australia Post.

The to the case is that on 27 March 2012 Australia Post, filed an application seeking relief in respect of  alleged infringement of its registered trade mark AUSTRALIA POST by Digital Post Australia Pty Ltd  and others associated with it DPA. Australia Post further alleged that DPA contravened the Australian Consumer Law ss 18, 29(1)(a), 29(1)(g) and 29(1)(h) (see also Competition and Consumer Act 2010 (Cth) Schedule 2). Australia Post also alleged that DPA passed off DPA’s proposed service as a service of, or associated with, authorised or approved by Australia Post.

In essence the not as yet released “Digital Post Australia” service is a "free online postal service" allowing users to receive all their essential postal mail in a "secure online location". It purportedly "allows consumers to receive their important postal mail, such as bills, statements, insurance documents, government mail, stock and brokerage disclosures and annual reports in one central and secure online location."

Australia Post argued the name constituted trademark infringement, along with misleading and deceptive conduct and passing off.

The Federal Court was of the view that Australia Post’s claims were "without merit". Saying at one point: "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".

Even the earlier decision of Middleton J ([2012] FCA 372 (4 April 2012)) had indicated a positive outcome for DPA, when  he found the disclosure at the bottom of the DPA website saying that DPA was not associated with Australia Post was sufficient so as not to cause confusion in the mind of the public.

Read more about the decision.

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