The Federal Court has dismissed an appeal by Australia Post that digital mail service Digital Post Australia infringed on its trade mark.
In 2012, Digital Post Australia successfully defended Australia Post’s allegations of trade mark infringement, misleading and deceptive conduct and passing off.
In a ruling handed down in August last year, the Federal Court dismissed all claims and awarded costs to Digital Post Australia.
Australia Post appealed the decision. On Friday, the Federal Court upheld the original judgement, finding that “in our view, the primary judge did come to the correct conclusion in finding no deceptive similarity between the marks of Digital Post Australia and Australia Post”.
David Hynes, chairman of Digital Post Australia, said the company was confident the original decision would be upheld.
“We were first to market, trading under a name that accurately reflects what we do,” he said in a statement.
Both companies have been locked in a battle to win over Australian consumers with their respective digital mail services. Digital Post Australia switched on its service early in November last year. The free service enables users to receive, organise and store essential mail digitally in one secure location.
Digital Post Australia said almost 1000 Australian companies had opted to make mail available through its service. These included publicly listed companies that make dividend statements, proxy voting forms, annual reports and other communications available to their shareholders through the service.
The Australia Post Digital MailBox was made available to the public earlier this year and AMP, Telstra and Yarra Valley Water are current providers, the company said.
There are also a number of local council and regional water authorities around the country using the mailbox, with more to come on-line in the new year.
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In an emailed response to CIO, Australia Post said it was disappointed with the outcome of the case as it leaves open the possibility of ongoing confusion for consumers.
“We will consider how to respond to the judgement in due course,” the company said in the statement.