Tuesday, December 17, 2013

The Survey Evidence Swing-and-Miss: Australian Postal Corporation v Digital Post Australia

In what should be an entirely unremarkable and unsurprising decision, the Full Federal Court recently ruled unanimously that the marks ‘Digital Post Australia’ and ‘www.digitalpostaustralia.com.au’ were not be deceptively similar to Australia Post’s registered trade marks. The case was first filed on 27 March 2012, with Australia Post alleging infringement of their registered trade mark ‘AUSTRALIA POST’ by Digital Post Australia Pty Ltd. It was also alleged that Digital Post Australia breached the Australian Consumer Law ss 18, 29(1)(a), 29(1)(g) and 29(1)(h) and that Digital Post Australia passed off their service as being associated or endorsed by Australia Post.

Digital Post Australia is advertised as a “free online postal service,” which allowed users to send and receive important mails in a “secure online location.” The main application touted is the ability to receive essential mails such as bills, statements, insurance documents and other confidential correspondence in a secure and private location.

The primary judge accepted evidence that the name was chosen by an external brand consultant as descriptive of a safe, solid digital mailbox service (the Digital Post part) and not because it bore a resemblance to Australia Post’s mark (the Post Australia part). Australia Post bullishly pushed on with an appeal.

The Full Federal Court was stern in its judgment that there is no deception or confusion at play in the case. The Court even referring to Australia’s claims as “without merit,” citing that it is “difficult to imagine that anyone who is competent with computer technology will have any doubt that Digital Post Australia is separate and distinct from Australia Post.”

There are a couple of points raised in this case on survey evidence. First is that expert evidence was declared as largely irrelevant in relation to trade marks infringement, despite being relevant to a claim of misleading and deceptive conduct. There was evidence given that consumers will pay attention to the word POST in the DPA name and based on the presence of the word AUSTRALIA, may assume that Australia Post had merely create a sub-brand. The Full Federal Court held that the expert evidence had no bearing when it comes to determining deceptive similarity.

Another key point was when the Full Federal Court held that the consumer surveys presented were inherently unreliable, citing that the respondents were recruited from a sample group that was already well-acquainted with the brand of one of the parties in an earlier survey, so there was no telling whether the respondents already had the brand in their minds when answering the survey.

At first instance, the judge said,

"... the major problem with the Court’s use of the surveys to inform its consideration of the issue of deceptive similarity is that the class of survey respondents was not confined to potential users of the proposed digital mail service. The respondents were at large. I place no weight on the survey evidence. It does not assist me to determine what is, in any event, a matter for the Court."

This reminds me of the controversy over survey evidence in the 1990 decision of French J (as he was then) in SGIO v GIO. This matter involved a four week trial, of which three weeks were spent arguing over survey evidence - and it was more or less entirely discounted by the Court. Since then, the Federal Court has issues practice directions which should resolve issues between the parties around the validity of the survey well-before trial. Twenty-three years after SGIO v GIO, trade mark litigators are still getting it wrong.

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