31 August, 2012

 

Legal News & Analysis – Asia Pacific – Australia – TMT

 

In Australian Postal Corporation v Digital Post Australia and Ors, the Federal Court of Australia considered whether there was a deceptive similarity between the respondent's trade mark "Digital Post Australia" and the applicant's trade mark "Australia Post". The dispute arose in the context of digital mail services launched by the respective parties in March 2012.  Australia Post contended that there was a risk of consumers being deceived or confused by the two names and that, specifically, there would be confusion as to whether the respondent, Digital Post Australia, was offering a service connected with Australia Post.

 
On 17 March 2012, Marshall J in the Federal Court ruled in favour of Digital Post Australia, concluding that there was no real, tangible danger of deception or confusion occurring as a consequence of the respondent adopting the mark "Digital Post Australia". In reaching this conclusion, his Honour commented that whilst Australia Post had a statutory monopoly over the delivery of letters and parcels, it was not yet associated in the minds of potential customers with the provision of digital mail and that as the potential audience for digital mail services was likely to be "technologically competent and internet savvy", members of that class were unlikely to have any doubt that the two parties were separate and distinct from each other.  For much the same reasons, the Court concluded that Digital Post Australia had not engaged in false or misleading conduct, in breach of section 18 of the Australian Consumer Law, arising from a false or misleading representation of an association with the reputation of Australia Post.
 
To view the decision click here.
 

 

For further information, please contact:

 

Gordon Hughes, Partner, Ashurst

gordon.hughes@ashurst.com 

 

 

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