31 05 2017

Australia Post has lost a two-year long trademark battle with growing Australian start-up, Sendle.

Since it first began its operations in 2014, Sendle has been offering Australian small and medium business owners a parcel delivery service for what they claim is on average 40% cheaper than traditional postal methods. In late 2014, Sendle applied to trademark their slogan ‘POST WITHOUT THE OFFICE’. Australia Post filed their intention to oppose the trademark application in May 2015, arguing that the trademark was deceptively similar to its own trademarks and that they have a substantial reputation in the word ‘POST’. Australia Post argued that the phrase ‘POST WITHOUT THE OFFICE’ would lead the public to mistakenly believe that it was simply Australia Post’s services provided online.

In response to this, Sendle submitted that there was “no prospect of confusion” and that the phrase specifically directs people away from Australia Post. Sendle argued that the phrase clearly indicates that the services that Sendle provides are not associated with the traditional delivery methods for which Australia Post is recognised, and immediately suggests that Sendle’s services are something different.

On 12 May 2017, the Australian Trademarks Office handed down their decision in the matter, finding in favour of Sendle. They found that the phrase was “something approaching or analogous to parody” and was not deceptively similar to any of Australia Post’s trademarks. They further found that Australia Post did not have a reputation in the terms ‘post office’ or ‘post’ as trade marks, and that consumers of ordinary intelligence and memory would not be confused or deceived by the use of the phrase ‘POST WITHOUT THE OFFICE’.

This case serves as an important reminder that companies will rarely be granted a monopoly over a trademark term where other traders or competitors are likely to have a legitimate desire to also use the term.

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