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
The marvellous
world of superhero
licensing So what was the problem
with Quicksilver?
There are a number of
characters that branched
over a complicated middle
ground of IP between the two
studios. The rights affected
both Quicksilver and Scarlet
Witch, but to date only the former
has been cast in both an X-Men film
and an Avengers film. Quicksilver
(aka Pietro Maximoff) first appeared
in the X-Men comics in 1964,
created by writer Stan Lee and
For a shared fictional universe
artist Jack Kirby. He is a mutant that
as vast as the one Marvel
can move at lightning speeds and
have presented, there have
notably was revealed to be a son of
been surprisingly few issues in
Magneto, one of the most famous
production. However in 2013 when
X-Men villains. Problematically,
details of the second Avengers film,
over the course of the comics,
Age of Ultron, were being released,
he became a crucial part of both
an interesting IP dispute raised its
the X-Men and The Avengers.
head. Specifically, there were some
This meant that both Marvel and
additions to the Avengers family –
Fox would have rights to use
Quicksilver and Scarlet Witch
aspects of the copyright
– that fans of the original
relating to Quicksilver
comics had seen
under the licensing
before in another
agreements. successful
Both films
movie franchise,
were therefore
There are
a number
X-Men. allowed to depict
of characters that
But why would
Quicksilver on
branched over a
this cause
screen. For
confusion? complicated middle
Fox, this was
straightforward The character
ground of IP between
– no mention of
of Quicksilver
the two studios.
The Avengers.
is famously a
But there were
mutant and a
some caveats
key part of the
on Marvel’s use
X-Men comic books.
of the character.
Crucially, Marvel
The key ones being that in
does not own the rights to the
The Avengers universe, Marvel
X-Men, they’re instead owned by
20th Century Fox (Fox). Back in 1993, cannot refer to Quicksilver as a
when Marvel Studios was struggling mutant, or depict any connection
to the X-Men or Magneto.
financially, they licensed out some
of their characters to various other
In Age of Ultron, Marvel took extra
studios, while keeping the rights to
steps to distance themselves from
The Avengers. Fox took advantage
any overlap. Notably, “Quicksilver”
of the situation and bought the
was referred to solely by his name,
film rights for the X-Men. From the
Pietro Maximoff, in the film and the
first instalment of the X-Men film
character was of Eastern European
franchise in 2000, it was established descent. Additionally, the word
that Fox held the reputation for the
“enhanced” was used to explain
X-Men and the mutant superheroes
his powers, with amendments to
that make up that team.
his backstory such that they were
formed through experimentation
by Hydra, a villainous organisation
portrayed in the Marvel films.
Based on the continued expansion
of the Marvel universe and the
number of licensing agreements
that stem back to the decisions the
studio made in the 90s, there was
the possibility of further conflicts
arising. However, the recent
purchase of Fox Studios by Disney
should clear up the murky overlap
between the studios, bringing the
X-Men under the same umbrella
company as Marvel. The manner
by which each studio dealt with
Quicksilver ended up being an
intriguing case study in how shared
IP rights in elements of a character
could be similarly depicted in
two separate media entities.
Inspire September 2018
The Marvel Studios
franchise has enjoyed
unprecedented box
office success over
the last decade. Much
of Marvel’s cinematic
world revolves around
The Avengers, arguably
one of the studio’s
most popular film
franchises right now.s 1 .
06 Chris Schlicht, Deputy
Managing Partner
BSc LLB FIPTA
chris.schlicht@pof.com.au Co-Authored by Amanda Morton