After a two-year trademark battle, Sendle has won a case against Australia Post to trademark the slogan “Post without the office”.
In May 2015, Australia Post formally opposed a trademark application by the Sydney-founded parcel delivery platform, which raised $5 million in August last year, for the tagline.
Australia Post claimed the “Post without the office” slogan breached the Trades Marks Act by being “deceptively similar” to a number of the postal giant’s own trademarks.
During the ensuing trademark dispute, Australia Post told IP Australia “Post without the office” is a manipulation of its brand and used examples like “Louis without the Vuitton” and “Hungry without the Jacks” to make its case.
But Sendle argued there would be “no prospect of confusion” if it was able to register the trademark, as “the mark itself directs people away from Australia Post”.
On May 12 this year, IP Australia found in favour of Sendle at a hearing at its Canberra office, and ruled that Australia Post has no grounds to oppose the trademark application.
“I do not find that the Opponent’s hypothetical treatment of other well-known trade marks is analogous,” hearing officer Debrett Lyons wrote in the decision.
“In the hypotheticals, HUNGRY WITHOUT THE JACKS 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.”
Speaking to StartupSmart, Sendle co-founder and chief executive James Chin Moody describes the decision as a win for “common sense”.
“From the very beginning, we were never intending to create confusion that we were the Post Office but to do the opposite of that,” Moody says.
According to Moody, “Post without the office” is simply a “great tagline that talks about what we do and what we don’t do”.
He says he was surprised to “suddenly” get a letter from lawyers representing Australia Post back in 2015, but knew Sendle would stand its ground.
“[I] was a little taken aback [but] in the same way small business stands up to big business everyday, and because our purpose is to help small businesses thrive … we were going to stand up for ourselves and not be intimated,” he says.
Moody says the best thing Sendle did at the time was to not use the tagline and seek professional legal counsel.
“That was the thing we did immediately because we respect the process, we respect the law,” he says.
And while a trademark battle is the last thing a startup needs, Moody says, it hasn’t distracted Sendle from its mission.
“It’s money that you don’t necessarily want to spend in the early days and I’d have to spend a lot of time because you have to prepare evidence,” he says.
“I think this [case] by itself won’t make a big difference to [the delivery startup sector],” he says.
“I think it does give us confidence to keep pushing ahead.”
In addition to last year’s funding raise, Sendle has recently appointed former eBay Australia executive Apurva Chiranewala as its head of growth and is servicing “tens of thousands of customers”, says Moody.
“We’re helping them to do $100 million worth of business,” he says.
Sendle is now able to proceed with its application to trademark the “Post without the office” slogan, however, Australia Post has the option to appeal IP Australia’s decision.
A spokesperson for Australia Post told StartupSmart the mail carrier is considering what it will do next.
“Australia Post has built our brand over the past 208 years and we are committed to protecting it,” the spokesperson 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. ”
A word of advice to new startups
Reflecting on the trademark dispute, Moody says his best advice to startups facing similar challenges would be to “rely on common sense”.
“From our perspective we didn’t believe it made sense and in some ways we don’t see this as a victory for us; it’s more a victory for Australian competition in this market space and it’s a victory for common sense,” he says.
“Stay true to your values and your purpose. That helps guide you through some difficult decisions.”
Moody also believes getting good advice from trusted legal professionals before problems arise is crucial.
“Getting the right advice is really critical in the early days,” he says.