Singtel Optus Pty Limited v Optum Inc (No. 2)

FEDERAL COURT OF AUSTRALIA

Singtel Optus Pty Limited v Optum Inc (No. 2)[2018] FCA 963

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:	26 June 2018
Catchwords:	TRADE MARKS – Non-use of trade mark in respect of services – application for removal of trade mark in respect of those services for non-use – whether the Court should exercise its discretion under s 101(3) of the Trade Marks Act not to remove trade mark TRADE MARKS – whether scope of services should be narrowed – use of trade mark in respect of services established COSTS – Court’s discretion to award costs – whether costs should be apportioned and if so, in what amount
Legislation:	Federal Court of Australia Act 1976 (Cth) Trade Marks Act 1995 (Cth)
Cases cited:	Austin, Nichols & Co Inc. v Lodestar Anstalt (2012) 202 FCR 490 Hills Industries Limited v Bitek Pty Ltd [2011] FCA 94 Hughes v Western Australia Cricket Association (Inc) [1986] FCA 382 Murray Goulburn Co-op Corporation v New South Wales Dairy Corporation (1990) 17 IPR 269 Shord v Commissioner of Taxation (No. 2) [2018] FCAFC 27 Singtel Optus Pty Limited v Optum Inc [2018] FCA 575 Wu v Li [2015] FCAFC 109
Date of hearing:	18-21 September 2017
Date of last submissions:	21 June 2018
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Trade Marks
Category:	Catchwords
Number of paragraphs:	12
Counsel for the Appellant and Cross-Respondent:	Mr C Dimitriadis SC with Mr H Bevan
Solicitor for the Appellant and Cross-Respondent:	Minter Ellison
Counsel for the Respondent and Cross-Claimant:	Mr M Darke SC with Mr D Larish
Solicitor for the Respondent and Cross-Claimant:	Corrs Chambers Westgarth

ORDERS

NSD 286 of 2016

BETWEEN:

SINGTEL OPTUS PTY LIMITED

Appellant

AND:

OPTUM INC

Respondent

AND BETWEEN:

OPTUM INC

Cross-Claimant

AND:

SINGTEL OPTUS PTY LIMITED

Cross-Respondent

JUDGE:	DAVIES J
DATE OF ORDER:	26 JUNE 2018

THE COURT ORDERS THAT:

1.The Appeal be dismissed.

2.The Appellant pay the Respondent’s costs of the Appeal, as agreed or taxed.

3.Pursuant to s 101(2) of the Trade Marks Act 1995 (Cth), trade mark registration numbers 558811 and 578775 be removed from class 35 of the Register only insofar as each of those registrations is in respect of "management consulting in this class; public relations in this class".

4.The Cross-Claim otherwise be dismissed.

5.The Cross-Respondent pay 85% of the Cross-Claimant's costs of the Cross-Claim, as agreed or taxed.

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

REASONS FOR JUDGMENT

DAVIES J:

1. On 1 May 2018 I delivered judgment in this proceeding: Singtel Optus Pty Limited v Optum Inc [2018] FCA 575. The issues determined by the Court included a cross-claim by Optum for orders that Singtel’s OPTUS mark be removed from the register pursuant to s 92(4)(b) of the Trade Marks Act 1995 (Cth) (“the Act”) for non-use in…