Australia Post loses trademark fight to startup Sendle
AUSSIE parcel delivery start-up Sendle has slammed Australia Post for "wasting taxpayers' money" in an attempt to stamp out competition after winning a two-year, David-and-Goliath trademark dispute with the government-owned letters business.
In May 2015 Australia Post took aim at Sendle, a door-to-door delivery provider that claims to offer rates 40 per cent cheaper than traditional post. The postal giant blocked the small company from registering its slogan, "Post without the office", claiming it was "deceptively similar" to its own trademark.
"For example, consider 'Coca without the Cola', 'Hungry without the Jack's' or 'Louis without the Vuitton'," Australia Post wrote in its submission to IP Australia, arguing only the brand should be able to manipulate its own trademark.
"The fast-food restaurant 'KFC' may wish to market a new beef range as 'Kentucky Fried without the Chicken', the fast-food restaurant McDonald's recently advertised a premium range of products as 'Very Un-McDonald's' [and] Chemist Warehouse may wish to market a purely online store as 'Chemist without the Warehouse'."
In its response, Sendle argued there was "no prospect of confusion". "The mark itself directs people away from Australia Post," the firm wrote. "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 its decision, IP Australia found in favour of Sendle, arguing it was "not satisfied that these trade marks are deceptively similar" and describing Australia Post's hypothetical examples as nonsensical.
"I do not find that the Australia Post's hypothetical treatment of other well-known trade marks is analogous," IP Australia delegate Debrett Lyons wrote. "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 trade mark 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."
The trademark body also hit out at Australia Post's argument that it "does not claim a monopoly" over the word "post" but rather has a "strong reputation" in the word through its "statutory monopoly" over certain postal services and their extension through services like "Parcel Post", "MyPost Digital Mailbox", "Pay it @ Post" and "Bank @ Post".
"This strikes me as a distinction without a difference," delegate Lyons wrote.
Sendle chief executive James Chin Moody described the decision as a "win for competition and a win for common sense". He said Sendle had spent more than $30,000 in legal fees and "so much more than that in wasted time" fighting Australia Post.
"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," he said. "Since they opposed us we are at least 20 times bigger, but in the early days it's more than we should have [spent].
"I actually think it's a great question for Senate estimates. Why would they spend your money, taxpayer money, to oppose a trademark which is so clearly not trying to pass itself off as Australia Post?
"If the Turnbull government is all about small business and innovation - Sendle is a delivery service 100 per cent built for small business and the growing world of e-commerce - it's a bit ironic that taxpayer money was used trying to stamp out competition.
"It's definitely not a good use of taxpayers' money, not a good use of our money, but we're glad we stood up to them."
Australia Post spokeswoman Michelle Skehan said Australia Post "has built our brand over the past 208 years and we are committed to protecting it". "We believe that use of the phrase is confusing, or likely to confuse customers," she said. "We are currently considering the decision and our next steps."
She said it was "misleading" to say taxpayer dollars had been used fighting Sendle. "We aren't taxpayer funded so no taxpayer dollars were used," she said. "We're a Government Business Enterprise that pays a dividend to the government. We are self-funding."
Australia Post came under fire earlier this year after chief executive Ahmed Fahour's $5.6 million pay packet was released by a parliamentary committee, despite attempts by the letters business to keep it a secret.
Even Prime Minister Malcolm Turnbull conceded the remuneration was "too high". Mr Fahour announced his retirement shortly afterwards, taking the opportunity to engage in a slanging match with One Nation Senator Pauline Hanson, who he accused of racism.