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

FEDERAL COURT OF AUSTRALIA

Singtel Optus Pty Limited v Optum Inc [2018] FCA 575 Appeal from: Singtel Optus Pty Ltd v Optum, Inc [2016] ATMO 11

File number(s): NSD 286 of 2016

Judge(s): DAVIES J

Date of judgment: 1 May 2018

Catchwords: TRADE MARKS – Appeal from a decision of a delegate of the Registrar of Trade Marks rejecting the Appellant's grounds of opposition to the Respondent's application for registration of trade marks pursuant to s 56 of the Trade Marks Act 1995 (Cth). TRADE MARKS – Grounds of opposition to registration: s 58 of the Trade Marks Act, trade mark ownership; s 44 of the Trade Marks Act, prior registrations; s 60 Trade Marks Act, trade mark holder's reputation. TRADE MARKS – Section 58 of the Trade Marks Act: whether the OPTUM word mark and OPTUS word mark substantially identical; whether services provided of the same kind; whether prior use of the OPTUS word mark sufficient to establish common law ownership. TRADE MARKS – Section 44 of the Trade Marks Act: whether the OPTUM word mark and OPTUS word mark substantially identical; whether the OPTUM word mark and OPTUS word mark deceptively similar; whether services provided similar or closely related; whether there are "other circumstances" because of which it would be proper to permit registration of either the OPTUM word mark or the OPTUM logo mark. TRADE MARKS – Section 60 Trade Marks Act: the extent of the applicant's reputation in relation to OPTUS; whether because of that reputation, the use of either the OPTUM word mark or the OPTUM logo mark likely to deceive or cause confusion. TRADE MARKS – Cross-claim for an order under s 101(2), asserting non-use of the OPTUS mark respect of goods and services; whether the Court should exercise its discretion not to order the removal of the applicant's trade marks in respect of any of those goods or services.