Sing Tel Optus Pty Ltd v Optum, Inc

This decision concerns an application by Sing Tel Optus Pty Ltd (the applicant) for extensions of time to file notices of intention to defend oppositions to its divisional trade mark applications. The opponent, Optum, Inc, argued that the applicant had not made a full and frank disclosure of the circumstances leading to its failure to file the notices within the prescribed time. The applicant contended that its agent, Philips Ormonde Fitzpatrick, had made a documented error in advising its overseas attorneys that class 38 services were covered by both the parent and divisional applications, leading the applicant to forgo filing notices of intention to defend.

The primary legal issue before the Hearing Officer was whether the applicant had satisfied the requirements of subsection 224(2)(a) of the relevant Act, which allows for extensions of time in cases of error. This required determining if the applicant's agent had made an error and if the applicant had made a full and frank disclosure of all relevant circumstances, including the agent's conduct, knowledge, beliefs, and mental processes, as per the principles in *Kimberly-Clark Ltd v Commissioner of Patents*. The Hearing Officer also had to exercise discretion in granting the extension, considering factors such as the relative inconvenience to the parties and the public interest.

The Hearing Officer found that the applicant's agent had indeed made a clear and documented error in advising the applicant regarding the coverage of class 38 services, which was compounded by the state of the ATMOSS system at the time. Despite the opponent's arguments that the disclosure was not sufficiently frank, the Hearing Officer considered the agent's documented error and actions to be a frank disclosure, stating that a more candid admission was unlikely and that the opponent's approach amounted to a "witch hunt." The Hearing Officer was satisfied that the applicant had established the error under section 224(2)(a). In exercising discretion, the Hearing Officer considered the inconvenience to both parties and the public interest in the regularity and certainty of the trade mark registration system, ultimately finding that the greater inconvenience would be to the applicant if the extensions were not granted.

Pursuant to subsection 224(2) of the Act, the Hearing Officer extended the time for Optum Inc to file its notices of intention to defend to 11 March 2015. The Hearing Officer also indicated an intention to direct the opponent to file and serve evidence in support of its opposition within three months, subject to any written representations from the parties. The parties were ordered to bear their own costs.