By Melinda Upton and Rohan Singh

On 6 December 2013, the Full Court of the Federal Court of Australia dismissed an appeal by Australian Postal Corporation (Australia Post) and upheld the primary judge’s decision that “DIGITAL POST AUSTRALIA” is not deceptively similar to “AUSTRALIA POST” and therefore would not infringe.

Australia Post, which owns the “AUSTRALIA POST” trade mark, commenced proceedings against Digital Post Australia (DPA) after DPA announced that it would launch a digital mail box service under the trade mark “DIGITAL POST AUSTRALIA”. Australia Post was unsuccessful before the primary judge and appealed to the Full Court.

While the Full Court briefly considered the relevant class of consumers and the essential element of DPA’s mark, in forming their view the judges primarily engaged in a discussion of the expert evidence (by a “branding expert”) and survey evidence led by Australia Post.

The expert’s report had been prepared for the case at first instance which included a claim for misleading and deceptive conduct (which was not relevant on appeal). The expert’s report concluded that a significant proportion of consumers would be confused as to the origin of DPA’s service and that they would be likely to associate DPA’s services with Australia Post.

However, on the issue of deceptive similarity for the trade mark infringement action (which was the subject of the appeal), the Full Court held that the expert’s evidence was irrelevant and should be given no prominence or weight, because it did not compare the respective trade marks. Instead, it had compared various other elements of Australia Post’s brand (including colour, and its “master brand” logo).

Australia Post also relied on evidence of two separate consumer surveys to prove actual confusion when consumers were first confronted with “DIGITAL POST AUSTRALIA” as a result of it being deceptively similar to “AUSTRALIA POST”. The two surveys contained the same questions but were completed by a different composition of participants.

The Full Court treated the first survey unreliable because participants were recruited from participants in another survey which had been sponsored by Australia Post and which had tainted the participants by exposing them to “AUSTRALIA POST” branding, such that they may have had the “AUSTRALIA POST” trade mark on their minds when completing the survey.

The Full Court held that the second survey was unreliable because no information as to the method of recruitment of participants was available.

Practical Tip: Bearing in mind the costs involved with preparing and adducing expert evidence and survey evidence, this case highlights the need for ensuring such evidence is prepared with the precise legal issue in mind. Additionally the case highlights the need to give careful consideration to survey methodology, including with regard to recruiting participants. Otherwise it may result in (costly) evidence being disregarded, as was the case here.