Sendle wins AusPost trademark dispute

Following a lengthy trademark dispute, in which Australia Post asserted sole right to use the terms ‘post’ and ‘office’, IP Australia has found in favour of delivery service Sendle, as first reported by News.com.au.
The agency noted that it was not satisfied that Sendle’s ‘post without the office’ slogan was “deceptively similar” to Australia Post’s own trademark.
In the course of the trademark battle, the national postal service likened the connection between ‘post office’ and Australia Post to several corporate brand identities.
“Consider ‘Coca without the Cola’, ‘Hungry without the Jack’s’ or ‘Louis without the Vuitton’,” Australia Post wrote in its submission. In delivering its decision, IP Australia described the hypothetical examples as nonsensical.
“I do not find that the Australia Post’s hypothetical treatment of other well-known trade marks is analogous,” said Debrett Lyons, IP Australia delegate. “In the hypotheticals, ‘Hungry without the Jack’s’ and ‘Louis without the Vuitton’, the interposition of the words ‘without the’ results in an expression which has no hint of a meaning. The added words merely intersect with the known trademark with no new meaning.
“The hypothetical, ‘Coca without the Cola’, is simply mystifying since the introduced words result in an expression which might cause consumers, if they thought of the beverage giant, to wonder what the product might be.”
In its submission, Australia Post argued that rather than claim a monopoly over the word ‘post’, it wanted its “strong reputation” over the word through its “statutory monopoly” of services including ‘Parcel Post’, ‘MyPost Digital Milbox’, ‘Pay it @ Post’ and Bank @ Post recognised.
“This strikes me as a distinction without a difference,” Lyons said.
Sendle CEO James Chin Moody told News.com.au that, after having spent more than $30,000 in legal fees and wasting hours fighting the case, the decision was a “win for competition and a win for common sense.”
“You never want to get an email from a top law firm, but at the end of the day I’m glad we didn’t kowtow to them,” Moody said. “Since they opposed us we are at least 20 times bigger, but in the early days it’s more than we should have.”
Australia Post spokeswoman Michelle Skehan said, “We believe that use of the phrase is confusing, or likely to confuse customers. We are currently considering the decision and our next steps.”