Singtel Optus Pty Limited v Optum Inc  FCA 575 (1 May 2018)
Unsuccessful appeal by Singtel against a Trade Marks Office decision rejecting its oppositions to applications for trademark registration of the OPTUM word mark (filed on 21 July 2011) and the OPTUM logo mark (filed on 29 July 2011) shown below for various health care related services in classes 35, 36, 44 and 45.
The Trade Marks Office decision is reported here
Optum was largely successful in its cross claim seeking partial removal of various registrations for the OPTUS trade mark owned by Singtel which covered goods and services other than for, or in connection with, telecommunications or communications. However, no final conclusion was reached and discretion was not considered.
The s58 ownership ground of opposition failed because Davies J agreed with Optum that its OPTUM word and logo marks are not substantially identical to OPTUS. Rather curiously, her Honour indicated that if she was wrong and OPTUM is substantially identical to OPTUS, then the OPTUM Logo mark would also be substantially identical to OPTUS because “the presence of the device does not substantially detract from the force of the substantial identity of the words.”
Her Honour, by way of obiter dicta, also went on to consider whether the services for which Singtel first used its OPTUS mark were the same or of the same kind as any of the services covered in Optum’s trade mark applications, but also found against Singtel on this issue.
The evidence disclosed trade mark use of OPTUS in connection with a presentation to NSW Health for non-telecommunication services in the health care sector in 2005. Davies J was prepared to accept that Singtel’s use of the stylised ‘yes’ OPTUS constituted a use of the OPTUS word mark. In any event, there was also use of the word OPTUS by itself in the presentation slides which her Honour construed as trade mark use and not mere use as a business name. However, Davies J had difficulty deciding whether any of the services offered by Singtel under its OPTUS trade mark directed to the health care sector as reflected in the presentation and responses to NSW Health’s tenders were the true equivalent of any of the services covered by Optum’s trade mark applications because the services were described too broadly and generally to identify the nature and character of the actual services being promoted.
Singtel also relied upon use of OPTUS in a presentation to the NSW branch of the Australian Dental Association in February 2005 and in a project with iSoft between 2005 and 2007, but Davies J construed such use to be trade mark use of OPTUS in relation to the provision of services which were not the true equivalent of any of the services covered by Optum’s trade mark applications. There was also a project with Healthe International Pte Limited, but the descriptions of the services provided were too broad or general in nature.
Singtel also relied upon its Optus HealthPoint e-health business solution for streamlining processing of Medicare claims and payments which was marketed to health professionals from August 1997. However, this was under Optus HealthPoint and Optus Communications branding which did not involve trade mark use of OPTUS. Even if there was trade mark use of OPTUS, Davies J considered the services were not the true equivalent of any of the services covered by Optum’s trade mark applications.
Finally, Singtel also relied upon a construction industry contract in 2002 and the provision of mobile phone insurance since 1996 but, again, Davies J did not regard these as true equivalent kinds of services. Her Honour also took the view that Singtel’s evidence relating to the provision of training services for use of point of sale and accounting systems since 1997 was insufficient to show OPTUS used as trade mark.
Under the S44 ground of opposition, the issue was whether the OPTUM word and/or logo marks were deceptively similar to OPTUS and, if so, whether the services covered by Optum’s trade mark applications were similar to the services or closely related to the goods covered by the prior OPTUS trade mark registrations.
Davies J agreed with Optum that its OPTUM word mark was not deceptively similar to OPTUS. Her Honour observed “the aural and visual differences are such that there would be no likelihood of confusion between the two marks. Whilst OPTUS and OPTUM are both single words with the same prefix, the words do not have a close phonetic resemblance and neither of the words lend themselves to mispronunciation. Moreover, whilst the words only differ in the last letters, both words are invented words with different connotations that do not create a deceptive resemblance of ideas. Thus, as a matter of impression and common sense, I do not think that a person of ordinary intelligence would be likely to be confused or deceived by the OPTUM mark, even allowing for an imperfect recollection.”
Her Honour also noted, again by way of obiter dicta, that “the fame of the registered OPTUS marks reduces the chances of a consumer’s imperfect recollection of them”. The evidence of Singtel was that OPTUS was recognised by Brand-Finance Australia as the eighth most valuable Australian brand in 2011 (being the relevant time at which to assess deceptive similarity). Consequently, this is a situation where the OPTUS mark and its use in connection with telecommunication services is “notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it”. Hence, it fell with the exception to the general principle is that a trade mark owner’s reputation in a particular mark is an irrelevant consideration in the assessment of deceptive similarity.
In case she was wrong on the deceptive similarity issue, Davies J went on to consider whether any of the services in Optum’s trade mark applications are similar to or closely related to the services or goods in Singtel’s OPTUS trade mark registrations and would have found in favour of Singtel on this issue, but only in respect of some of the services designated in Optum’s trade mark applications.
Although strictly unnecessary to do so because of Her Honour’s finding in favour of Optum on the deceptive similarity issue, Davies J would have applied the s44(3)(b) other circumstances provision in favour of Optum and allowed registration of its trade mark applications. The relevant factors were that the applied for trade marks reflect Optum’s company name, the Optum brand name had been used extensively overseas in relation to services in the healthcare industry, and there was no evidence of any confusion in Australia since 2014 when Optum commenced use of the applied for OPTUM word and logo marks.
Under the s60 reputation ground, Davies J agreed with Optum that Singtel’s evidence did not establish that the OPTUS word mark, at the relevant July 2011 priority dates, had a reputation beyond associating the mark with telecommunications. More particularly, the evidence did not establish a reputation that extended to the services for which Optum was seeking registration. Her Honour noted that “although the language of s 60 does not, in express terms, require that it be shown that the reputation applies to the goods and services the subject of the trade mark application, s 60(b) is unlikely to be satisfied unless such a reputation is established because the use of the mark in respect of such goods or services is not likely to deceive or cause confusion”. Even if the reputation of the OPTUS marks had extended to the healthcare field, Her Honour considered there would still be no likelihood of confusion because of the differences between OPTUM and OPTUS and the strong reputation attaching to the OPTUS mark in relation to telecommunications.
Davies J then went on to consider Optum’s cross claim for non-use of the OPTUS registered marks for general business consultancy services, management consulting services, advertising services, public relations services and marketing services in class 35. The relevant non-use period was the three years period ending on 30 April 2016.
Her Honour found that Singtel’s evidence did establish use of OPTUS for business consultancy services in class 35, but not for general business consultancy, management consultancy services, advertising services, public relations services or marketing services in class 35. However, the parties agreed that it was appropriate for them to make further submissions on re-drafting the relevant specifications before making any orders. Further, as no final conclusion was reached on the non-use claim, it was unnecessary for Davies J to consider whether discretion should be exercised in favour of Singtel to not order removal of the relevant registrations in respect of the services for which non-use was established.
Davies J also found it unnecessary to decide whether, to the extent the removal actions under s92 were successful, the relevant OPTUS trade mark registrations are then not available as relevant prior registrations for the purpose of s44 objections.