Sendle is a recently established online Australian delivery service that offers discounted postal services. In 2015, Sendle achieved acceptance of the trade mark Post without the Office. The registration of this trade mark was opposed by Australia Post on the basis that, amongst other things, it was deceptively or confusingly similar to Australia Post’s Post Office trade mark. In its submissions, Australia Post claimed that they had a substantial reputation in the word Post and the trade mark Post Office and as such, members of the public would associate Post without the Office with Australia Post. Essentially, Australia Post contended that the use of the Post without the Office trade mark would confuse members of the public into thinking that Sendle’s services were in fact being offered by Australia Post. As such, it was asserted that members of the public would be directed to Sendle’s services when they were actually looking for Australia Post.
In response, Sendle argued that the Post without the Office trade mark would in fact direct customers away from Australia Post as Post without the Office is clearly suggestive of not being associated with Post Office. Specifically, Sendle argued that Post without the Office “in an artful way, it tells the consumer that the parcel and delivery services provided by Sendle are not associated with orthodox or traditional delivery methods for which Australia Post is recognised.” In rebuttal, Australia Post provided hypothetical trade marks similar to well-known trade marks and argued that the inclusion of ‘WITHOUT THE’ into the famous marks to form ‘COCA WITHOUT THE COLA’, ‘HUNGRY WITHOUT THE JACKS’ and ‘LOUIS WITHOUT THE VUITTON’, would not sufficiently differentiate the hypothetical trade marks from their corresponding well-known marks. The crux of Australia Post’s argument was that the inclusion of ‘WITHOUT THE’ does not detract from the recognition of a well-known trade mark. IP Australia found that, in the hypothetical trade marks, the addition of the words ‘without the’, unlike in the present instance, provides no hint of a meaning and sided with Sendle.
Another ground for opposing the registration of a trade mark is that the trade mark does not distinguish the goods and services from those of others. In this regard, if a trade mark as a whole is one that other traders need or want to use then the trade mark is likely to be deemed to be insufficiently inherently adapted to distinguish the goods from other traders (for example, it would be unfair to have protection for Pizza for pizzas because other traders will want to use this term in the course of trade). IP Australia found that other traders would not have a legitimate desire to use Post without the Office in relation to their services.
IP Australia ruled in favour of Sendle, and found that Australia Post had no basis on which to successfully oppose the Post without the Office trade mark registration. We are pleased with the outcome for Sendle and are proud to report that Fisher Adams Kelly Callinans assisted Sendle in this opposition.
A trade mark is an important tool used to distinguish your products and/or services from those of competitors. As such, it is important to ensure that your trade mark has the greatest chance of registration by pre-emptively considering issues including those mentioned above. We at Fisher Adams Kelly Callinans can assist you with advice as to an appropriate trade mark protection strategy and in lodging your trade mark application.
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