Case note on Australian Postal Corporation v Digital Post Australia  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:
(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.
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.
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.