The Federal Court of Australia has ruled against Australia Post in its trademark challenge against a rival digital mail service being set up later this year.
Australia Post, which is launching a digital mail service using Pitney Bowes’ Volly technology later this year, said the brand name of its rivals Digital Post Australia (DPA) was too similar to its own trusted brand.
But on Friday Judge Marshall dismissed the case, ruling that there was not a “real, tangible danger” of the private sector consortium being mistaken for Australia Post or its digital mail service.
The Judge said that changing the order of the words “Australia” and “Post”, and adding the prefix “Digital” was enough to avoid deception or confusion among consumers.
“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,” said the Judge.
The ruling suggested that Australia Post is not currently associated with digital mail services in the eyes of Internet users, with the Judge citing testimony that Internet users were likely to take care in determining who is providing their digital mail services sufficient that they would not mistake the two forthcoming options.
DPA is a consortium of Computershare, an Australian-listed financial services technology specialist, international marketing and communications company Salmat and US-based digital mail specialist Zumbox.
The consortium first announced their plans back in March, aiming to establish a digital mailbox service by the end of 2012. Australia Post announced its intentions a few weeks later to develop its own service this year, branded Digital Mailbox.
Australia Post attempted to win an injunction back in April blocking DPA using its brand name ahead of the court case decided on Friday, but was unsuccessful.
The company had argued it had been developing the Digital Mailbox service since as far back as 2005.
Australia Post said in a statement today that it will be considering Friday’s ruling before making a decision on whether to appeal “to prevent third parties from using an Australian owned, trusted brand for their commercial gain”.
Source: Post&Parcel/Federal Court of Australia