Australian Postal Corporation v Digital Post Australia  FCAFC 153 (6 December 2013)
The Full Federal Court dismissed an appeal by Australian Postal Corporation (APC) alleging trade mark infringement by Digital Post Australia (DPA) through its use of DIGITAL POST AUSTRALIA as a trade mark and domain name for a digital mail box service.
This service fell within the specification of APC’s trade mark registrations for AUSTRALIA POST, so it really came down to whether DIGITAL POST AUSTRALIA was deceptively similar to AUSTRALIA POST. The Full Court agreed with the trial judge that the respective trade marks were not deceptively similar.
This case provides a good example of the difficulties associated with enforcing trade marks which have a descriptive element.
APC relied on evidence from a marketing expert and consumer surveys, but the Full Court essentially agreed with the trial judge that the marketing expert’s opinion evidence should be given no prominence or weight in determining deceptive similarity and the survey evidence was inherently unreliable.
Although the Full Court considered the trial judge took an overly narrow approach to identifying the relevant class of consumers, this did not have any real significance for determining the appeal because the trial judge did come to the correct conclusion on the deceptive similarity issue.
The Full Court reviewed decided cases on deceptive similarity and noted that “the threshold for confusion is not high. Courts must compare the marks visually and aurally in the context of how the marks are used, and decide if there is a reasonable probability that the ordinary person to whom the marks are targeted, entertains a reasonable doubt as to the relationship between the marks. But there must be a realistic assessment, and a mere possibility of confusion is not enough.”
Although it was not strictly necessary to determine whether DPA’s conduct fell with the defences to infringement under s122(1) by virtue of good faith use of a person’s name or to indicate the intended purpose or a characteristic of the relevant services, the Full Court accepted the trial judge’s finding of good faith use by DPA because it involved “honest use without ulterior motive, no intention to deceive, or to make use of the goodwill acquired by another trader”.