Descriptive but not distinctive: individual elements of a word mark may not necessarily be protected

Key Points:

The recent Australia Post case shows how hard it is to establish trade mark infringement where the words comprising a well known mark are otherwise generally descriptive.

The recent Federal Court decision in Australian Postal Corporation v Digital Post Australia Pty Ltd (No 2) [2012] FCA 862 demonstrates the difficulty of establishing trade mark infringement when the words comprising a well known registered trade mark are generally descriptive.

In this decision, the Australian Postal Corporation lost a claim for trade mark infringement against Digital Post Australia Pty Ltd (DPA) over the similarity of DPA's business name and proposed digital postal service with the registered Australia Post marks and digital postal service.