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IP @ Ashurst 28 Jun 2018 The devil is in the detail: Optus' reputation works against it in OPTUM trade mark dispute 

Singtel Optus Pty Limited v Optum Inc [2018] FCA 575

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What you need to know 

  • The Federal Court held that the different consonant endings between OPTUS and OPTUM was enough to make the two marks substantially distinct.
  • General or broad descriptions of services may not be enough for the Court to make an assessment of whether services the subject of two marks are similar.
  • Optus’ longstanding reputation in Australia was a relevant factor against there being any likelihood that consumers would be deceived by the use of the OPTUM marks. 

What you need to do

  • If you are disputing a trade mark application, you must provide evidence with sufficient detail of the nature and content of the goods or services to which your dispute relates.
  • If you own a mark with a particular notoriety or familiarity in the Australian market, you must be prepared to provide reasons as to why, despite that reputation, Australian consumers would still be deceived by the use of a mark similar to yours.

Background

This decision relates to an appeal by Singtel (owner of the OPTUS marks) of a decision of a delegate of the Registrar of Trade Marks rejecting Singtel’s opposition to Optum’s two trade mark applications for the OPTUM word mark and OPTUM logo mark. Singtel operates a telecommunications business whereas Optum provides information and support services to the healthcare industry. 

Singtel’s appeal relied on the grounds of ownership (section 58 of the Trade Marks Act 1995 (Cth)), prior registrations (section 44) and reputation (section 60). Optum cross-claimed for the removal of the OPTUS word mark in relation to class 35 services.

The Appeal

Justice Davies rejected all of Singtel’s grounds of appeal.

Ownership

Justice Davies determined that the difference between the consonant endings of “S” and “M” was enough to make the two word marks substantially distinct from each other both aurally and visually. Furthermore, the different last letters meant that each mark evoked words with different meanings; OPTUM evoked optimal or optimum and OPTUS evoked opt or choice. 

Justice Davies further concluded that even if the marks were substantially identical, common law ownership was not found. On this point, Justice Davies accepted that Singtel had used the OPTUS marks before the priority dates of the OPTUM marks in relation to various non-telecommunications services in the healthcare sector as evidenced by various presentations and expressions of interest made to healthcare organisations bearing the OPTUS mark or making reference to Optus as a badge of origin.

The services referenced in these documents and further explained by witness evidence included technology consulting, application development, data centres, project management and system integration. However, Justice Davies determined that the descriptions of the services provided by the evidence was too general to determine whether the services promoted by Singtel and the designated services in Optum’s trade mark applications were similar.

Prior registrations

The relevant assessment to determine whether the OPTUM marks were deceptively similar to OPTUS is to consider whether there is a real risk that Optum’s use of the trade marks would cause confusion as to the origin of those services.

In applying this test, Justice Davies determined that the OPTUM marks were not deceptively similar. In addition to the marks bearing aural and visual differences, the notoriety of the OPTUS mark within telecommunication services minimised the risk of any real confusion amongst consumers between the OPTUM and OPTUS marks.

Justice Davies further concluded that even if the marks were deceptively similar, there were other circumstances which permitted the registration of the OPTUM marks. Those other circumstances included the following:

  • the OPTUM marks use Optum’s name;
  • all of Optum’s business in Australia is conducted under the OPTUM name and trade mark;
  • while Optum had not used the marks in Australia until 2011, the mark was first registered in the US in 1993, and was used extensively overseas in the healthcare industry such that preventing Optum from registering its mark in Australia would cause substantial prejudice; and
  • there was no evidence of confusion since use of the OPTUM marks commenced in Australia.

Reputation

Justice Davies concluded that the evidence did not establish that the OPTUS word mark had a reputation in Australia beyond telecommunications. Justice Davies then proceeded to conclude that even if her assessment was incorrect, the notoriety of the OPTUS marks to Australian consumers meant that it was unlikely that consumers would be confused or deceived by the use of the OPTUM marks.

The cross-claim

In relation to the cross-claim, Justice Davies found that Singtel only rebutted the allegations of non-use made with respect to business consultancy services in class 35. The parties agreed that further submissions should be made before the Court makes any orders on the removal or redrafting of registrations in relation to those services where no use has been demonstrated.

Lessons learned

Parties looking to establish ownership through prior use should be mindful of the evidentiary burden that comes with proving that services are the same as or the same kind of services the subject of the disputed application. In particular, parties should be prepared to provide evidence of the nature and content of those services to a significant level of detail.

Furthermore, parties with a mark that has a longstanding reputation in Australia should be wary that this will be a factor against the likelihood of there being any confusion between similar marks for the purposes of establishing deceptive similarity.

Authors: Florence Tan, Graduate; and Lisa Ritson, Partner

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The information provided is not intended to be a comprehensive review of all developments in the law and practice, or to cover all aspects of those referred to. Readers should take legal advice before applying it to specific issues or transactions.

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