Can a trade mark
be too famous?
Inspire September 2018
such that as a matter of impression
The Federal Court has
and common sense, a person of
dismissed an appeal
ordinary intelligence would not be
by telecommunications
likely to be confused or deceived
giant Singtel Optus
by the OPTUM mark, even allowing
for an imperfect recollection.

from a decision of
It was considered that the fame of
the Trade Marks
the registered OPTUS marks
Office, rejecting
reduced the chances of a
its opposition
consumer’s imperfect
recollection of
to health
them. A trade
information mark owner’s
The decision
technology reputation in a
suggests that
and particular mark
owners of famous
is not a relevant
services trade
marks may
find consideration in
company the assessment
it difficult
to take
Optum’s of deceptive
action against use
application similarity.

of similar marks by
However, for
third parties.

in assessing
registration the nature of a
of its OPTUM
consumer’s imperfect
recollection of a mark, the
trade marks 1 .

05 The decision suggests that
owners of famous trade marks may
find it difficult to take action against
use of similar marks by third parties.

The decision also appears to have
significantly expanded the “other
circumstances” that would permit
acceptance or registration of trade
marks over earlier substantially iden-
tical or deceptively similar marks.

Comparing OPTUS and OPTUM
The Court rejected the submission
that the marks were substantially
identical, noting the letters “S”
and “M” were not visually similar,
differed in sound and affected how
the words are pronounced to make
words aurally distinct. Even when
emphasis is placed on the first
syllable of each word, the visual
and aural differences produced
by the different last letter of each
word were found to make the marks
sufficiently different to distinguish
them on a side by side comparison.

Further, the Court accepted that the
OPTUM marks were not deceptively
similar to the prior OPTUS mark. The
aural and visual differences were
Singtel Optus Pty Limited v
Optum Inc [2018] FCA 575
1
fact that the mark is notoriously
ubiquitous and of such long
standing that consumers generally
must be taken to be familiar with it
may be relevant. The Court found
that the fame of the OPTUS mark
with respect to telecommunication
services reduced the chances of a
consumer’s imperfect recollection
of them such that there was no
real risk of confusion between the
marks. “Other circumstances”
Interestingly, the Court also
held that even if the marks were
deceptively similar, there were other
circumstances within the scope
of section 44(3)(b) which meant
that it would be proper to permit
registration of the OPTUM marks.

These factors included that the
Optum marks use the company’s
name, and that given its extensive
use overseas in relation to services
in the healthcare industry it would
cause substantial prejudice to
Optum if it was unable to use
its marks in Australia. Despite
the marks only coexisting after
the priority date, the fact that
there was no evidence of actual
confusion was also a relevant
factor in permitting registration.

This aspect of the decision appears
to significantly broaden the “other
circumstances” which would justify
acceptance and registration of a
mark and do not reflect current
Trade Marks Office practice.

Finally, the Court held that the
reputation which existed in the
OPTUS marks did not preclude
registration of OPTUM. Optus’
reputation was found to be limited
to telecommunications and did
not extend to the services in
respect of which Optum sought
registration. Consistent with the
findings in relation to deceptive
similarly, it was also noted that the
differences in the marks and the
strong reputation in the OPTUS mark
in relation to telecommunications
made it unlikely that consumers
would be confused or deceived
by the use of the OPTUM marks.

The decision highlights that in
cases of well-known or famous
trade marks, the Court will be
reticent to make allowance for the
imperfect recollection a person
may have of a trade mark in an
assessment of deceptive similarity
or the likelihood of deception or
confusion. It also appears that
extensive use of a trader’s own
name in other jurisdictions, together
with co-existence of marks in
Australia without confusion, may
be sufficient to permit acceptance
or registration of a mark despite
an earlier conflicting registration.

David Longmuir,
Partner BSc(Hons) LLB(Hons) LLM FIPTA
david.longmuir@pof.com.au