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

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

The Court was satisfied that it was reasonable under s 101(3) not to remove the OPTUS mark from the Register for advertising services and marketing services in class 35 because Singtel had shown significant involvement in marketing and advertising activities shortly after and since the statutory non-use period, and it was reasonable to infer an intention to use the OPTUS mark for those services. The Court refused to narrow general business consultancy services to business consultancy workshops because the accepted evidence showed services of a business consultancy nature, and their provision through workshops did not justify limiting the registration to that forum. Because Singtel...

Jurisdiction
Australia
Judgment Date
25 June 2018
Procedural Posture
Trade Marks Appeal and Cross Claim for Removal of Trade Mark Registrations for Non Use / Judgment on Orders, S 101(3) Discretion, Scope of Services, and Costs Following Singtel Optus Pty Limited V Optum Inc [2018] FCA 575
Outcome
Appeal dismissed; cross-claim allowed in part for removal of registrations only in respect of management consulting and public relations services in class 35, otherwise dismissed; costs ordered against Singtel as specified.
Legal Topics
['non Use of Trade Mark' 'removal From Register' 'discretion Under S 101(3) of the Trade Marks Act 1995 (cth)' 'class 35 Services' 'advertising Services' 'marketing Services' 'business Consultancy Services' 'apportionment of Costs']
['intellectual Property' 'trade Marks' 'costs'] ['non Use of Trade Mark' 'removal From Register' 'discretion Under S 101(3) of the Trade Marks Act 1995 (cth)' 'class 35 Services' 'advertising Services' 'marketing Services' 'business Consultancy Services' 'apportionment of Costs']

Case Brief

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Procedural Posture

Trade Marks Appeal and Cross Claim for Removal of Trade Mark Registrations for Non Use / Judgment on Orders, S 101(3) Discretion, Scope of Services, and Costs Following Singtel Optus Pty Limited V Optum Inc [2018] FCA 575

Legal Issues

  1. 1 ['Whether the Court should exercise its discretion under s 101(3) of the Trade Marks Act 1995 (Cth) not to remove the OPTUS mark in respect of advertising services and marketing services in class 35 despite non-use during the statutory period.' 'Whether the registration should be narrowed from general business consultancy services to business consultancy workshops in class 35.' "What costs order should be made on Optum's cross-claim."]

Ratio Decidendi

The Court was satisfied that it was reasonable under s 101(3) not to remove the OPTUS mark from the Register for advertising services and marketing services in class 35 because Singtel had shown significant involvement in marketing and advertising activities shortly after and since the statutory non-use period, and it was reasonable to infer an intention to use the OPTUS mark for those services. The Court refused to narrow general business consultancy services to business consultancy workshops because the accepted evidence showed services of a business consultancy nature, and their provision through workshops did not justify limiting the registration to that forum. Because Singtel...

Court Disposition

Appeal dismissed; cross-claim allowed in part for removal of registrations only in respect of management consulting and public relations services in class 35, otherwise dismissed; costs ordered against Singtel as specified.

Orders

  • ['The Appeal be dismissed.' "The Appellant pay the Respondent's costs of the Appeal, as agreed or taxed." '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...