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Singtel Optus Pty Limited v Optum Inc

Singtel Optus Pty Limited v Optum Inc

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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.

Legislation: Trade Marks Act 1995 (Cth)

Cases cited:
Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56

ALDI Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185

Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6

ASIC v Hellicar (2012) 247 CLR 345

Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43

Buying Systems (Australia) Pty Limited v Studio Srl [1995] FCA 1063

C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCAFC 1539

Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331

Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495

Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143

Chris De Lorenzo v Deva Concepts LLC [2012] ATMO 55

Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd(No 3) [2017] FCA 60

Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721

Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184

Commercial Union v Ferrcon (1991) 22 NSWLR…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2018] FCA 575
Decision Date: 1 May 2018

CaseChat Overview and Summary

Singtel Optus Pty Limited contested Optum Inc's application for registration of trade marks in the Federal Court of Australia. Singtel argued that Optum's proposed marks were too similar to its own OPTUS mark, which could cause confusion in the marketplace. The court had to determine whether Optum's proposed marks were substantially identical to Singtel's, whether the services provided were of the same kind, and if Singtel's prior use of the OPTUS mark established common law ownership. Additionally, the court had to consider whether the marks were deceptively similar, if the services were similar or closely related, and if there were any other circumstances justifying the registration of either the OPTUM word mark or the OPTUM logo mark. The court also had to assess the extent of Singtel's reputation and whether the use of either the OPTUM word mark or the OPTUM logo mark was likely to deceive or cause confusion.

The court found that Optum's proposed marks were not substantially identical to Singtel's OPTUS mark, and the services provided were not of the same kind. The court also found that Singtel's prior use of the OPTUS mark established common law ownership. The court further found that the marks were not deceptively similar, the services were not similar or closely related, and there were no other circumstances justifying the registration of either the OPTUM word mark or the OPTUM logo mark. The court also found that Singtel's reputation was not sufficient to prevent the registration of Optum's proposed marks. Finally, the court found that the use of either the OPTUM word mark or the OPTUM logo mark was not likely to deceive or cause confusion.

The court dismissed Singtel's appeal and allowed Optum's cross-claim. The court ordered that Optum's trade marks be registered, and that Singtel's opposition to the registration be dismissed. The court also ordered that the parties file minutes of order giving effect to these reasons within seven days.

Orders

Orders of the court

1. The parties are directed to file minutes of order giving effect to these reasons within seven (7) days.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

Finally, Optum argued that the slides did not establish the use of the OPTUS word mark in relation to the services promoted, as many of the services identified were services provided by NCS, not by Singtel. Singtel, however, was promoting the services that it could provide which, relevantly, included the skills and expertise that could be brought to bear by NCS. Mr Donker gave the following evidence in cross-examination:If you want to use the court book numbering, it’s 5.306. You will see the heading, there, “Optus experience in health systems”. And is it recalled with your recollection that what’s actually described there is the experience of NCS in health systems?---No. Optus and NCS are part of the same group. You have combinations of experience that Optus is bringing to Optus’ availability.This was also shown by the references in the document itself – “Optus and NCS”; “NCS working with Optus…” and “what Optus can do for governments”. (vi) Conclusion In conclusion, I am satisfied that the OPTUS word mark was used as a trade mark in the IBS/NCS Story slide presentation.(vii) Whether the services were the same, or of the same kind, as the Optum designated services The next question is whether “the IBS/NCS Story” presentation shows use of the word OPTUS as a trade mark with respect to services that are the same, or of the same kind, as any of the designated services in Optum’s trade mark applications. Singtel’s primary case was that the services are the same because the presentation promoted a broad range of services described by reference to a range of activities, including “Change Management”, “Technology Consulting”, “Application Development”, “Systems”, “Network”, and “Infrastructure” integration and “Application”, “Facilities” and “Business Process” management and with reference to more particular types of offerings, especially in relation to: electronic health records and insurance and claims as shown by the MediNet system, comprising the “key applications” of the “National Patient Master Index” and the “Central Claim Processing System”; integrated hospital and clinical information systems, such as “Outpatient Administrative System”; and information management covering “Electronic Medical Record Exchange” (the sharing of electronic medical records across public hospitals and clinics, as part of a “controlled exchange of essential patient medical information”) as well as the “Public Health Information System” project (the establishment of a “public health information network … comprising an information portal, operation system, document management, data warehouse and data mining”). It also highlighted Singtel’s then current health prospects for WA Health (an e learning trial), the HIC (including an “authentication solution for Medicare customers”) and a “National Disease Surveillance register” for the Commonwealth Department of Health.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

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.
Legislation:	Trade Marks Act 1995 (Cth)
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 ALDI Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185 Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6 ASIC v Hellicar (2012) 247 CLR 345 Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43 Buying Systems (Australia) Pty Limited v Studio Srl [1995] FCA 1063 C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCAFC 1539 Campomar Sociedad, Limitada v Nike International Ltd (1998) 85 FCR 331 Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495 Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143 Chris De Lorenzo v Deva Concepts LLC [2012] ATMO 55 Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd(No 3) [2017] FCA 60 Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 Colorado Group Ltd v Strandbags Group Pty Ltd [2007] FCAFC 184 Commercial Union v Ferrcon (1991) 22 NSWLR…