Thank goodness for good faith

Case note on Australian Postal Corporation v Digital Post Australia [2013] FCAFC 153

In the first instance
In 2012, Australia Post, the Applicant, issued proceedings in the Federal Court of Australia against Digital Post Australia, the Respondent, for trade mark infringement and contraventions of the Australian Consumer Law. The Applicant argued that the Respondent’s trade mark DIGITAL POST AUSTRALIA infringed its registered trade mark ‘AUSTRALIA POST’ in relation to digital mail services. In response to the infringement claim, the Respondent sought to rely on the defence of good faith under ss 122(1)(a)(i) and (1)(b)(i) of the Trade Marks Act 1995:

Section 122
(1) In spite of section 120, a person does not infringe a registered trade mark when:
(a) the person uses in good faith:
(i) the person’s name or the name of the person’s place of business;

(b) the person uses a sign in good faith to indicate:
(i) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services;

The primary judge found that DIGITAL POST AUSTRALIA was not deceptively similar to AUSTRALIA POST. Despite the Applicant’s infringement claim failing, the primary judge addressed the Respondent’s defence of good faith, finding that it had used its trade mark in good faith to indicate the intended purpose of its digital mail service ‘without any desire to be associated with Australia Post or to leverage any of its brands’.

The Applicant subsequently appealed the findings of the primary judge on the grounds that he erred in finding that the trade marks were not deceptively similar and that the Respondent used its trade mark in good faith.

On appeal
The Full Court upheld the primary judges’ conclusion that the marks were not deceptively similar and further addressed whether the Respondent’s adoption of its name was in good faith.
Members of the Digital Post Australia’s board gave evidence in respect of the how its name was adopted. They submitted that the Respondent’s name was one of four shortlisted potential names which were forwarded to its solicitors for clearance searches and subsequently selected on the basis that it was functional and descriptive. While Digital Post expressed concern that there may be a statutory restriction on the use of the word POST in its trade mark, it was not concerned that the name would cause confusion between itself and the Applicant.

The Full Court accepted the Respondent’s evidence that it used its trade mark in good faith to indicate the ‘kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services’ as set out under s 122 (1)(b)(i). The Court found that unlike the Respondents’ conduct in Anheuser-Busch Inc v Budekovicky Budvar (2002) 56 IPR 182, there was no ‘wilful blindness’ to the potential for confusion on the part of Digital Post Australia. On this basis, the appeal was dismissed.

Lessons
Contrary to the findings in Ansheuser-Bush, this case suggests that the defence of good faith can be successfully relied upon even when the Respondent is aware of the Applicant’s reputation provided registrability advice is sought before adopting a name.

Expired auctions roll out rugs.com.au

In spirited bidding today, the domain name rugs.com.au sold for $22,110 plus GST on drop.com.au.

There were 9 bidders involved in the bidding, with the winning bidder being Adelaide company L.T.D Services Pty Ltd, who also registered a number of other domains.

New Privacy Laws Take Effect

A sweeping change in privacy laws take place with effect from today. The changes will see the introduction of new Australian Privacy Principles known as APPs, which regulate the manner in which personal information is handled by businesses (with a turnover of $3 million or greater), government, personal information traders and health service providers.

What it means for business, is that privacy policies will need to be updated, if they haven’t already been, and processes for the handling of personal information will need to be harmonised with the new laws.

Cooper Mills Lawyers provide advice on all aspects of the new privacy laws, whether it is in audit for compliance with the law or the amendment or preparation of a new privacy policy, we can assist.

Australian Trade Mark Process

Cooper Mills is proud to launch a short trade mark process video to help you understand the Australian TradeMark Process. The simple process is easy to follow and is focused on a business audience seeking to develop and protect their brand.

The video breaks down each step along the way, don’t forget to watch it today. We are also offering a free Trade Marks ebook that will soon be available for download from our website. The trademark ebook called Protect your Brand – a Guide for Business is the perfect companion to this video. In the meantime if you would like a copy of the Trade Marks ebook please give us a call.

Web.com acquires Snapnames

Nasdaq listed Web.com has acquired Portland based Domain Registrar Snapnames.

Web.com already owns substantial registrar businesses with Network Solutions and Register.com in its stable.

According to a press release from Snapnames CEO Craig Synder indicates that at least in the short term it is business as usual for Snapnames.

The acquisition is timely in light of new GTLD releases, and the consolidation of registrar businesses including last week’s announcement of Melbourne IT’s acquisition of the Netregistry Group.

PPSR Grace Period Nearing End

The Personal Property Securities Register (PPSR) online register was introduced on 30 January 2012. As part of its introduction a 2 year grace period was granted to enable people to register unregistered securities, this period ends on 31 January 2014.

The PPSR register ‘protects your business when buying, selling or leasing out property including valuable goods, stock, vehicles, machinery, office equipment, trademarks, crops and livestock – almost anything except real estate.’.

Get in quick before the grace period ends or risk missing out on your opportunity to secure your legacy interests.

For further information or to register your security interest go to www.ppsr.gov.au