Australian Postal Corporation v Digital Post Australia  FCAFC 153
On 6 December 2013, the Full Federal Court of Australia dismissed an appeal by Australian Postal Corporation (Australia Post) against a decision of a single judge of the Federal Court holding that Digital Post Australia Pty Ltd had not infringed Australia Post's registered trade mark – "Australia Post" – through use of its "Digital Post Australia" mark.
The primary judge held that:
- "Digital Post Australia" was not deceptively similar to "Australia Post" within the meaning of section 120(1) of the Trade Marks Act 1995 (Cth);
- the domain names adopted by Digital Post did not infringe the "Australia Post" trade marks;
- the adoption of the name "Digital Post Australia" did not constitute misleading or deceptive conduct in contravention of the Australian Consumer Law; and
- Digital Post had used its name in good faith and, therefore, if trade mark infringement had been found, Digital Post would have had a defence under section 122(1) of the Trade Marks Act 1995 (Cth).
Australia Post challenged the primary judge's findings regarding the Trade Marks Act 1995 (Cth).
The "Australia Post" and "Digital Post Australia" trade marks
Australia Post has, since 30 August 1995, been the registered owner of the trade mark "Australia Post", which is registered for mail delivery services, electronic mail delivery services and electronic mail communications services. Since 11 August 2009, Australia Post has also been the registered owner of the trade mark "Australia Post" in respect of certain financial services and since 25 August 2009, Australia Post has been the registered owner of the trade mark "Australia Post" in respect of certain telecommunications services.
Digital Post announced on 14 March 2012 that it would be launching a digital mail box service under the name Digital Post Australia. Shortly after, on 26 March 2012, Australia Post launched a digital mail box service under the name "Australia Post Digital Mailbox". The day after it launched its digital mail box service, Australia Post commenced proceedings against Digital Post alleging that "Digital Post Australia" and the associated website (www.digitalpostaustralia.com.au) were deceptively similar to the "Australia Post" trade marks.
No deception or confusion between trade marks – primary judge's finding
After comparing the marks visually, aurally and considering the relevant surrounding circumstances, the primary judge found that there was no real, tangible danger of deception or confusion occurring as a consequence of Digital Post adopting the "Digital Post Australia" mark. His Honour held that an ordinary consumer would not be caused to wonder whether Digital Post's digital services came from the same source as those offered by Australia Post, particularly because users of digital mail boxes would be technologically competent and internet savvy and would recognise the difference between the two services. In addition, the different order of the words and the addition of 'Digital' was sufficient to avoid deception and confusion.
Australia Post appeals trade marks aspect of trial judge's findings to Full Federal Court
Australia Post contended that the trial judge had erred in finding that "Digital Post Australia" was not deceptively similar to "Australia Post" on the basis that the primary judge had, among other things:
- classified potential consumers as technologically competent and internet savvy when in actual fact this classification was too narrow and potential consumers should have been the population at large;
- applied incorrect considerations when assessing deceptive similarity, in particular, the trial judge had considered whether the "Australia Post" trade mark was associated with the provision of digital mail box services;
- incorrectly discounted the survey evidence (which had shown actual customer confusion);
- incorrectly discounted the evidence of a particular expert – Dr Downes (an expert on branding), which had not been contradicted; and
- made errors in law and fact regarding whether or not the good faith defence had been made out.
Full Court upholds trial judge's conclusion that "Australia Post" and "Digital Post Australia" are not deceptively similar
The Full Court held that:
- the primary judge had classified the relevant class of consumers too narrowly. The relevant class of consumer would be a member of the general public who has access to or could have access to a digital mailbox.
- the primary judge did come to the correct conclusion in finding that there was no deceptive similarity between the marks;
- the surveys were inherently unreliable (due to issues regarding recruitment) and it would therefore be impermissible to place any reliance on them;
- the report prepared by Dr Downes was admissible. However, it was held that Dr Downes' evidence should be given no prominence or weight due to the fact that much of the evidence within the report was irrelevant with respect to trade mark infringement, as the law requires that the marks be compared. Dr Downes had considered constituent elements (to the registered mark) or marks that were not the subject of the claim;
- there was no wilful blindness on the part of Digital Post to the potential for confusion between the marks and there was no reason to intervene regarding the primary judge's findings that a good faith defence would have been available to Digital Post.
The appeal was therefore dismissed.
Lessons for trade mark owners regarding survey and expert evidence
This decision once again highlights the court's reluctance to accept survey evidence where there is any likelihood that the persons surveyed may have been influenced by the design of the survey or by previous events. In this case little weight was placed on the first survey by the court on the basis that respondents to the survey were taken from a pool of respondents who had previously answered the Australian Lifestyle Survey, which was sponsored by Australia Post. The court could not discount the fact that respondents to the first survey may have been exposed to Australia Post branding or at the very least, had Australia Post on their minds, when completing the first survey. The second survey was also given little weight on the basis that no information was provided to the court regarding the recruiting methods.
This case follows a long line of Federal Court and Full Federal Court authority which has held that little weight should be given to survey evidence adduced by parties on the basis of various flaws in the survey, including deficiencies regarding the survey methodology, recruitment, participants or questions. See for example, our discussion of the recent case Adidas AG v Pacific Brands Footwear Pty Ltd (No 3)  FCA 905 and of survey evidence generally. If intending to rely upon survey evidence in Australian trade mark disputes, parties doing so must ensure they take into account the Court's guidance regarding survey design and methodology to ensure the best prospect of survey results being considered persuasive.