SingTel Optus Pty Limited v Optum, Inc

SingTel Optus Pty Limited (the Opponent) opposed the registration of two trade marks, the "Optum Word Mark" and the "Optum Composite Mark," by Optum, Inc. (the Applicant). The Opponent, which has used the trade mark "OPTUS" since 1991 in relation to telecommunications products and services, argued that the Applicant's proposed marks were substantially identical or deceptively similar to its own registered marks. The Opponent also contended that the Applicant was not the owner of the Word Mark under section 58 of the *Trade Marks Act 1995* (Cth) because its mark, OPTUM, was substantially identical to the Opponent's OPTUS mark, and the Opponent had used OPTUS first for similar goods and services. The proceedings were heard by Hearing Officer Debrett Lyons.

The legal issues before the Hearing Officer were whether the Applicant's proposed trade marks should be refused registration on the grounds that they were substantially identical or deceptively similar to the Opponent's registered trade marks under section 44 of the Act, and whether the Applicant was the owner of the Word Mark under section 58 of the Act. Additionally, the Opponent raised grounds under sections 42(b) and 60 of the Act, arguing that the use of the Applicant's marks would be likely to mislead or deceive or cause confusion among consumers due to the Opponent's widespread reputation in the OPTUS trade mark.

The Hearing Officer found that the ground of opposition under section 42(b) had not been established. The decision indicates that the opposition was unsuccessful on all pressed grounds. As the successful party, the Applicant was awarded costs against the Opponent.