The Facts
Trade mark dispute between parcel delivery company Sendle and Australia Post
Sendle Pty Ltd is a Sydney-based parcel delivery company that provides low-cost, door-to-door delivery, enabling customers to avoid physically attending a post office to send parcels.
As a start-up back in 2014, Sendle lodged an application to register the trade mark “Post without the office”. In 2015, Australia Post filed a Notice of Intention to Oppose the registration, arguing that the phrase was a breach of the Trade Marks Act because it was deceptively similar to its own trade marks and likely to mislead consumers.
The matter came before the Australian Trade Mark Office for hearing in February 2017.
Expert commentary on the court's decision
Australia Post found to have no grounds to oppose Sendle’s trade mark application
In Australian Postal Corporation v Sendle Pty Ltd [2017] ATMO 42, the Australian Trade Mark Office (ATMO) found in favour of Sendle, ruling that Australia Post had no grounds to oppose the trade mark application and allowing the trade mark application to proceed to registration.
Australia Post had opposed the application for registration of the trade mark under section 42(b), section 44 and section 60 of the Trade Marks Act, on the basis that Sendle’s trade mark is deceptively or confusingly similar to Australia Post’s trade marks. Australia Post contended that due to decades of use of its trade marks, it has a substantial reputation in the word “Post”, and that members of the public identify the organisation by its Post and Post Office trade marks.
Australia Post argued that ultimately, the meaning and impression given by Sendle’s trade mark would mislead the public into thinking mistakenly that Sendle’s services would be provided by Australia Post.
Australia Post also argued that should the ATMO find against them on the above grounds, implying that Australia Post’s trade marks lack sufficient distinctiveness from Sendle’s so as to create public confusion, then that same lack of distinctiveness should render the trade mark unregisterable under section 41 of the Act.
Identical or deceptively similar trade marks
Successfully establishing a ground of opposition under Section 44 ultimately hinged on Australia Post showing that Sendle’s trade mark was substantially identical or deceptively similar to its own – both of which the ATMO found Australia Post had failed to do.
Under the Act, a trade mark is taken to be deceptively similar if it so nearly resembles the other trade mark that it will likely deceive or cause confusion. In previous cases, findings of deceptive similarity have been found where the opponent’s word mark is wholly encompassed in the applicant’s trade mark.
Use of words “…without the…” to differentiate Sendle’s trade mark
Australia Post argued this case to be the same, as the interposition of the words “without the” did not sufficiently differentiate Sendle’s trade mark from their own.
To support their argument, they referred hypothetically to manipulating other well-known brand names – “Coca without the Cola”, “Hungry without the Jacks” or “Louis with the Vuitton” – to show that the use of the words “without the” does not detract from the recognition of the initial mark, meaning it remains deceptively similar to the initial trade marks.
The ATMO did not accept this argument, finding that the use of “without the” in the hypothetical examples results in an expression which has no meaning – unlike “Post without the office”.
Would consumers think Sendle’s service was part of Australia Post?
Australia Post also argued that by Sendle manipulating their trade mark to indicate a departure from the traditional services offered under the mark, it sent a message that the product on offer is instead a new offering under Australia Post’s business.
This would effectively lead customers to think the service on offer under this trade mark is an extension of Australia Post’s existing business – essentially offering a new service line to the physical post office delivery service – rather than a service offered by Sendle. Again, they referenced hypothetical examples, including “Kentucky Fried without the Chicken”.
The ATMO also dismissed this argument, finding the Kentucky Fried Chicken example left the well-known trade mark relatively intact and would therefore likely point customers to a product extension of the same company, but found this not to be the case with “Post without the office”.
Trade marks with a reputation in Australia
To establish grounds under section 60, Australia Post had to establish that its trade marks have a reputation in Australia, and that because of that reputation, the use of the trade mark would likely deceive or cause confusion to the public.
Sendle argued that as the Australian public is so intimately familiar with Australia Post, its trade marks and its prominent red branding, the likelihood of a consumer confusing it with Sendle’s own trade mark was entirely unlikely.
The ATMO agreed, finding that consumers would be sufficiently careful and astute as to not be confused or deceived by the trade mark.
Misleading representation of associations
Australia Post also argued that the use of the trade mark would be contrary to law, and constitutes a breach of sections 18 and 29(1) of the Australia Consumer Law, contained in Schedule 2 to the Competition and Consumer Act 2010 (Cth). Its argument was that the use of the trade mark conveyed false and misleading representations to the public that Sendle as an entity was associated or affiliated with Australia Post.
The ATMO disagreed, finding no possibility that the section 42(b) ground could be supported by an argument of passing off, nor were there any actionable misrepresentations caused by the use of the trade mark which would enliven the Australian Consumer Law. This decision was made on the basis that the whole message of Sendle’s trade mark is that their services are not associated with Australia Post.
Did the trade mark distinguish the applicant’s goods or services?
Section 41 provides that an application must be rejected if the trade mark is not capable of distinguishing the goods or services from the goods and services of others. The classic test for inherent adaptation to distinguish is explained in Clark Equipment Co v Registrar of Trade Marks, in which Kitto J stated that the ultimate question is whether the trade mark is such that through its use the company is able to distinguish its goods from the goods of others.
More recently, in Cantarella Bros Pty Limited v Modena Trading Pty Limited, the High Court stated that in assessing whether a trade mark is inherently adapted to distinguish involves firstly, a consideration of the “ordinary signification” of the words, and once that is established, an enquiry as to whether other traders could legitimately want to use the word(s) in respect of their own goods.
Might others want to use the trade mark for their services?
Sendle argued that while the use of the word “post” calls to mind its ordinary, dictionary definition, the trade mark then skilfully disassociates itself from this traditional or orthodox appreciation by using the words “without the office” – implying immediately that Sendle’s services are something different.
The ATMO found the ordinary signification of the trade mark in this case not to be a direct reference to the services, and further, found the trade mark not to be one that traders might legitimately desire to use in respect of their services. As such, Australia Post failed to establish its ground under section 41.