FEDERAL COURT OF AUSTRALIA

Singtel Optus Pty Limited v Optum Inc [2018] FCA 575

ORDERS

THE COURT ORDERS THAT:

1.    The parties are directed to file minutes of order giving effect to these reasons within seven (7) days.

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

REASONS FOR JUDGMENT

DAVIES J:

Introduction

1    The appellant/cross-respondent (“Singtel”) is in the telecommunications industry and owns a number of trade marks in Australia involving the word OPTUS. It has registered its trade marks in respect of various goods and services within classes 9, 16, 35, 38, 41 and 42.

2    The respondent/cross-claimant (“Optum”) conducts a global business providing health information assistance, support and related services. It has applied for registration of two trade marks in respect of various services within classes 35, 36, 44 and 45 (“the designated services”). Optum’s trade marks (collectively “the OPTUM marks”) are:

OPTUM

(“the OPTUM word mark”)

(“the OPTUM logo mark”).

3    This proceeding is an appeal by Singtel under s 56 of the Trade Marks Act 1995 (Cth) (“the Act”) from a decision of a delegate of the Registrar of Trade Marks rejecting Singtel’s grounds of opposition to the application of Optum for registration of the two trade marks. Singtel relied on ss 42(b), 44, 58 and 60 of the Act in opposing the registration of the OPTUM marks. The delegate dismissed Singtel’s opposition, holding that the OPTUM marks were not substantially identical with (ground 58), or deceptively similar to (ground 44), the OPTUS word mark, and there was no likelihood of deception or confusion because of the reputation of the OPTUS mark (ground 60) or likelihood of confusion so as to establish a breach of the Australian Consumer Law by reason of Optum’s use of the trade marks in respect of which registration was sought, nor would there be a misrepresentation for the purpose of passing off (ground 42(b)): Singtel Optus Pty Ltd v Optum, Inc [2016] ATMO 11).

4    As the appeal is by way of rehearing (s 197 of the Act), Singtel’s opposition to the registration of the OPTUM marks is determined as if it was an original application and Singtel has the onus of establishing its grounds of opposition: Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at [32], (“RTM v Woolworths”) at [45]; Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 at [7]. The notice of appeal relies on ss 44, 58 and 60 of the Act.

5    Optum has filed a notice of contention and also cross-claimed for an order under s 101(2) of the Act for the removal of various registered trade marks for the word OPTUS owned by Singtel in so far as those marks are registered otherwise than for, or in connection with, telecommunications or communications.

Issues

6    The parties agreed on a list of issues for determination as follows:

Ownership: s 58

1.    Whether either the OPTUM word mark or the OPTUM logo mark is substantially identical with OPTUS?

2.    If so, are the services in respect of which Singtel first used OPTUS the same as or of the same kind as any of the services in Optum’s applications?

3.    [Raised by Optum] Whether there has been prior use by Singtel of the OPTUS wordmark sufficient to establish common law ownership of that mark?

Prior registrations: s 44

4.    Whether either the OPTUM word mark or the OPTUM logo mark is substantially identical with OPTUS?

5.    Whether either the OPTUM word mark or the OPTUM logo mark is deceptively similar to OPTUS?

6.    Whether any of the services in Optum’s applications are similar to or closely related to the services or goods in Singtel’s registrations?

7.    Whether there are “other circumstances” because of which it is proper to permit registration of either the OPTUM word mark or the OPTUM logo mark?

Reputation: s 60

8.    What was the extent of Singtel’s reputation in relation to OPTUS before 2011?

9.    Because of that reputation, is the use of either the OPTUM word mark or the OPTUM logo mark likely to deceive or cause confusion?

Non-use (cross-claim)

10.    Whether, in the period April 2013 to April 2016, Singtel used OPTUS in respect of each of the impugned goods and services?

11.    If not, whether the Court should exercise its discretion not to order the removal of Singtel’s trade marks in respect of any of those goods or services?

12.    If the Court finds that removal of the trade marks should be ordered in respect of any of those goods or services, does it follow that the trade marks are not (to that extent) available as prior registrations for the purposes of s 44 of the Act?

7    It is convenient to deal with issues in the order in which they have been identified.

Section 58: Ownership

Question 1: Are the OPTUM marks substantially identical with the OPTUS word mark?

8    In order to make out the s 58 ground of opposition, one of the matters that Singtel must establish is that the OPTUS and OPTUM word marks are substantially identical: Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 (“Pham Global”) at [50]. The well accepted test for determining whether two marks are substantially identical is set out in The Shell Co. of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 per Windeyer J at 414:

In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

Thus, two marks are “substantially identical” if a total impression of similarity emerges from the side-by-side comparison of the two marks, having regard to the essential features of the registered mark: Pham Global at [51]. As OPTUS is a single word, the essential feature of that mark must be the word itself: Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60 at [173]. Accordingly, the marks to be compared are the words OPTUS and OPTUM and if a total impression of similarity emerges from the side-by-side comparison of the two words, the marks are substantially identical: Carnival Cruise Lines Inc v Sitmar Cruises Limited (1994) 120 ALR 495 at [62].

9    Singtel argued that the difference between the last letter of the OPTUM word mark and the OPTUS word mark did not prevent a finding of substantial identity. Singtel referred to Shanahan’s Australian Law of Trade Marks and Passing Off, 6th Edition where the learned authors state at [50.2225]:

… The issue is whether a “total impression of similarity (emerges) from a comparison between the two marks”. The inclusion or omission of the plural “s” and the elision or separation of two words would not prevent a finding of substantial identity, nor should a difference in one letter only between word marks. In Austech Ltd v Silver Colloid Pty Ltd the mark DENTA-PURE 5K was found to be substantially identical to DENTAPURE 5000. But the presence of an extra letter in a word trade mark may render it sufficiently different from another trade mark, as may a difference of more than one letter between single word trade marks.

10    Singtel argued that the two words are visually and aurally similar in that: (1) each word has 5 letters, of which the first 4 are identical and the last letter in each is a consonant; (2) each word has two syllables and, it was said, visually more focus falls on the first syllable drawn by the combination of the opening vowel and the central juxtaposition of hard consonants. This primary focus was said to be reinforced by the immediate appearance of the identical vowel at the beginning of the second syllable and that aurally the emphasis in pronunciation also falls more naturally on the first syllable. It was submitted that the approach in which the first syllable is emphasised accords with authority which has accepted that, in the English language, the beginning of words is accentuated and the first syllable of a word, as a rule, is the most important for the purpose of distinction, citing London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264 at 279 per Sargant LJ; ALDI Stores Ltd Partnership v Frito-Lay Trading Co GmbH (2001) 190 ALR 185, 54 IPR 344, [2001] FCA 1874 at [32] per Hill J and at [160] per Lindgren J. It was also submitted that whilst the final letter gives rise to a slight contrast in how the words sound and appear, it would be wrong to adopt an approach in which the final letter governed or dictated the overall impression and weight must also be given to the commonality of the vowel “U”. In short, it was submitted, the difference was very slight, consisting of a single consonant at the end of the second syllable of each word, in circumstances where the preceding syllables and letters are identical both visually and aurally and that identity resided in the emphasised portion of each mark. Another matter said to bear on the assessment of whether OPTUS and OPTUM are substantially identical marks is that neither word has an ordinary connotation in the English language.

11    Singtel argued that the total impression of similarity also applied to the OPTUM logo mark. It was submitted that the stylised form of the letters makes no difference to the word itself and does not alter the overall impression conveyed by the word, and that the presence of the square device at the left of the OPTUM logo mark does not detract from the force of the substantial identity of the words. It was submitted that if the device is noticed, it is given no meaning other than as a three dimensional geometrical shape which cannot be rendered in an aural representation. Alternatively, it was submitted, its configuration with a central opening reinforced the idea conveyed by the opening vowel “O” which immediately focuses the eye on the word which is the dominant cognitive cue in the mark.

12    Optum submitted on the other hand that visually the marks are different because the word OPTUS ends with an “S” while, in the OPTUM marks, OPTUM ends with an “M” and in a five letter word, the final letter is critical, especially where the prefix of the marks – OPT – is a common one. Further, it was said, the letters “M” and “S” bear no visual similarity. The visual differences were said to be even greater for the OPTUM logo mark given the presence of the device. It was also submitted the marks do not mean the same thing. It was submitted that whilst neither mark has any meaning on its face, the OPTUM marks evoke the idea of “optimal”/“optimum” whereas in contrast, if it invokes any idea at all, the OPTUS word mark evokes that of choice, i.e. “opt”, “for”, “us”. In terms of aural comparison, it was said that the OPTUM marks do not sound like the OPTUS marks. In both two syllable words the aural emphasis of the marks was said to be on the second syllable and to be aurally distinct because “S” and “M” are very different consonant sounds. Reference was made to a number of cases where one letter differences between marks have resulted in a conclusion of a lack of substantial identity, citing “Otrivin” Trade Mark [1967] RPC 613 (OTRIVIN and OTRIVINE); Lonza Ltd v Kantfield Pty Ltd (t/a Martogg & Co) (1995) 33 IPR 396 (FORTEX and FOREX); Nokia Corporation v Gavin Hutcheson [2011] ATMO 10 (OXI and OVI); Chris De Lorenzo v Deva Concepts LLC [2012] ATMO 55 (DEVA and DELVA); Ubay Pty Ltd v Ebay Inc. (2009) 85 IPR 428 (UBAY and EBAY).

13    I accept Optum’s submission that the mark OPTUM is not substantially identical to the mark OPTUS. Whilst there is only a single spelling difference between the two words, that spelling difference, in my view, is enough to make the words distinct from each other in that the letters “S” and “M” are not visually similar and also differ in sound. The different consonant endings affect how the words are pronounced and make the words aurally distinct. Contrary to Singtel’s submissions, the aural difference is not slight, even when emphasis is placed on the first syllable of each word, because the different consonant endings do not have a similar sound. In my view, the visual and aural differences produced by the different last letter of each word make the marks sufficiently different to distinguish the marks on a side-by-side comparison. The different meanings which the words evoke because of their different endings underscore how the different last letters render the marks sufficiently different from each other.

14    As I have concluded that the OPTUM word mark is not substantially identical with the OPTUS word mark, it must follow that the OPTUM logo mark is not substantially identical with the OPTUS word mark. Accordingly, Singtel’s ground of opposition under s 58 of the Act fails on this basis.

15    However, if am wrong and the marks are substantially identical, I would conclude that the OPTUM logo mark is also substantially identical with the OPTUS mark. As submitted for Singtel, the presence of the device does not substantially detract from the force of the substantial identity of the words.

16    In case it becomes necessary, I should deal also with the other elements which Singtel must establish to succeed on its ground of opposition under s 58 of the Act.

Question 2: Are the services in respect of which Singtel first used OPTUS the same as or of the same kind as any of the services in Optum’s applications?

Question 3: Whether there has been prior use by Singtel of the OPTUS wordmark sufficient to establish common law ownership of that mark?

17    This part of the reasons for decision is based on the premise that the OPTUM word mark is substantially identical with the OPTUS word mark and it is necessary for the Court to consider the other bases that must be established to succeed on the ground of opposition under s 58 of the Act, namely (1) that it made prior use of the OPTUS word mark before the priority dates of the OPTUM marks; (2) in respect of services that are the same as, or “the same kind of thing” as, the services which are the subject of the OPTUM trade mark applications: Colorado Group Ltd v Strandbags Group Pty Ltd (“Colorado”) [2007] FCAFC 184 at [16]–[17]; Pham Global at [50]; Anchorage Capital Partners Pty Limited v ACPA Pty Ltd [2018] FCAFC 6 (“Anchorage”) at [61].

18    Schedule A is a compilation of all the designated services of Optum’s trade mark applications. Where the services differ as between the OPTUM word and logo trade mark applications, this is noted in the footnotes.

19    Schedule B is a table which identifies the designated services in Optum’s trade mark applications that Singtel contended are services in respect of which it made prior use of the OPTUS word mark which are the same as, or are of the same kind as, the designated services for which Optum seeks registration.

20    The priority dates of the OPTUM word mark and the OPTUM logo mark are either 21 July 2011 (for the OPTUM word mark) and 29 July 2011 (for the OPTUM logo mark) or, Optum contended, 25 January 2011 (for the OPTUM word mark) and 15 February 2011 (for the OPTUM logo mark), being the dates on which it applied for registration of the same marks in the United States. Whether the priority dates are July 2011 or the earlier dates based on the US applications, it was accepted by Optum that Singtel made “use” of the OPTUS word mark before the priority dates of the OPTUM marks because of Singtel’s prior registration of the OPTUS marks. However, Optum contended that Singtel had not discharged the onus on it to prove prior use of the OPTUS mark as a trade mark in respect of services which were the same as, or of the same kind as, the services covered by Optum’s applications.

(1)    Applicable principles

21    The ground of opposition under s 58 ground is that the applicant for registration is not the owner of the trade mark. “Ownership” may be acquired by the act of applying for registration of a trade mark but a person is shown to have a better title to the trade mark than the applicant for registration if the other person has previously used the mark, or a substantially identical mark, in Australia as a trade mark in relation to the same goods or services, or goods or services of the same kind, as those that are the subject of the application for registration: Anchorage at [50]–[53].

Use as a trade mark

22    Use “as a trade mark” is use of the mark as a “badge of origin” in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods: Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 cited with approval in E& J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; (2010) 241 CLR 144 (“E&J Gallo”) at [43]. In E&J Gallo, the plurality (French CJ, Gummow, Crennan and Bell JJ) explained at [41]–[43] that the concept of “use” of a trade mark must be understood in the context of s 17 of the Act, which describes a trade mark as a sign used, or intended to be used, to “distinguish” the goods of one person from the goods of others and that one function of a trade mark is to distinguish the goods or services of the person using the mark from the goods or services of other persons – that is, to indicate the origin of the goods or services to which the mark has been applied.

23    To constitute trade mark use, the mark must also be used “in the course of trade”: s 17 of the Act. The words “in the course of trade” do not require an actual dealing in goods or services under a mark to show use as a trade mark (Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) [1984] HCA 73; (1984) 156 CLR 414 (“Moorgate”) at 432) but, as the cases illustrate, trade mark use is not established where the evidence does not show use of the mark beyond engaging in some preliminary discussion or taking preliminary steps to ascertain whether to offer to trade in the goods or services under the mark: Settef SpA v Riv-Oland Marble Co (Vic) (Pty Ltd) (1987) 10 IPR 402 (“Settef”); Woolly Bull Enterprises v Reynolds [2001] FCA 261 (“Woolly Bull”); (2001) 107 FCR 166; Unilever Aust Ltd v Karounos [2001] FCA 1132; cf. Buying Systems (Australia) Pty Limited v Studio Srl [1995] FCA 1063.

24    As the authorities also show, use of the mark as a trade mark need not be the only use. It is well established that a mark may be used as a trade mark even though it simultaneously performs a number of functions, only one of which is to act as a badge of origin: Anchorage at [56]. In each case, whether or not there has been use as a trade mark will depend on the context in which the use occurs: Woolworths Ltd v BP plc [2006] FCAFC 132; (2006) 154 FCR 97 (“Woolworths v BP”) at [77]; Anchorage at [56]. It is also well established that the use of the mark as a trade mark need not be sufficient to establish a local reputation and slight use of a mark in relation to the relevant goods or services is sufficient to establish ownership for the purposes of s 58: Moorgate at 432; Anchorage at [50]–[53].

Services the same as or of the same kind

25    As the authorities also show, the claim to “ownership” of a trade mark may be made not just in respect of the earlier use of the mark as a trade mark in respect of identical goods or services but where a person has already used the mark in relation to goods or services “of the same kind”: see Anchorage at [61]–[64]. Whether goods or services are “of the same kind” does not call for an enquiry as to whether there is “some broad genus in which some common functional or aesthetic purpose can be identified” nor is it “an enquiry about the type of trade in which concurrent use might cause confusion”: Colorado at [89]. Rather, it is an enquiry as to whether the goods or services are “true equivalents” or “essentially the same”. That enquiry falls to be addressed in a practical and common sense way: Colorado at [89] cited with approval in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 (“Accor”) at [185]; Anchorage at [64]. Applying this approach, the Full Court in Colorado held that backpacks were not goods of the same kind of thing as handbags, wallets and purses for the purposes of proprietorship. Allsop J (as his Honour then was) explained at [90]:

That backpacks are a type or style of bag does not answer the question as to whether they should be viewed as essentially the same goods as any bag or receptacle. The backpack is a bag with straps to be worn on the back. It is not essentially the same or the same kind of thing as other bags, handbags, purses or wallets. The task is not to identify the genus into which the goods upon which the mark was used fall, but to identify the goods.

Allsop J also considered that handbags were not the same kind of thing as wallets and purses. His Honour reasoned that whilst all three items were receptacles, and wallets and purses tended to be the same object (generally for men and women respectively) used for the same purpose – to carry money, cards (mainly credit cards), receipts and the like – handbags often fulfilled a wider purpose.

26    The Court may be able to look at the language of the goods or services described in a trade mark registration (or, as is here, the application for registration) to make findings on whether the goods or services in respect of which prior use is claimed are the same as, or of the same kind as, the goods or services so described: Accor. In Accor, the Full Court gave as an example the question in Colorado as to whether handbags, wallets and purses were, or were not, goods of the same kind as backpacks. But the Full Court also observed that whether services are the same, or of the same kind, may require an understanding (usually by reference to evidence) of the content of the service in question and ultimately findings about that matter based on the evidence.

27    In issue in Accor was whether leasing, letting and rental services were the true equivalents of commercial real estate agency services. In that case the appellant was the licensee of trade marks registrations for CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS in relation to various real estate and accommodation services. The appellant alleged that the respondent had infringed its trade marks by using CAIRNS HARBOUR LIGHTS and HARBOUR LIGHTS in relation to real estate services. The trade marks were registered in respect of services in Class 36 and Class 43 as follows:

Class 36:

(a)    agency services for the leasing of real estate properties;

(b)    commercial real estate agency services;

(c)    apartment letting agency;

(d)    apartment rental services;

(e)    rental of apartments; and

(f)    rental of accommodation.

Class 43:

(a)    accommodation letting agency services (holiday apartments);

(b)    accommodation letting agency services (hotel);

(c)    hotel accommodation services;

(d)    accommodation reservation services;

(e)    booking services for accommodation; and

(f)    hotel services.

28    The primary judge collectively classed the services, other than commercial real estate agency services, accommodation letting agency services (hotel), hotel accommodation services and hotel services, as “leasing, letting and rental services”; and accommodation letting agency services (hotel), hotel accommodation services and hotel services as “hotel services”. The primary judge classed “commercial real estate agency services” as something other than “leasing, letting and rental services”. The primary judge found that the appellant did not use the marks other than in respect of commercial real estate agency services and that the respondent was the first user of the trade marks in respect of the leasing, letting and rental services. On appeal, the appellant argued that the primary judge misapplied the governing principles in failing to recognise the overlap between commercial real estate agency services and the services for which each registration was obtained. The Full Court rejected that argument, reasoning that whilst there was some degree of overlap between “commercial real estate agency services” and aspects of some of the other services, “the degree, boundaries and measure of the overlap” was unclear. The Full Court stated that “the resolution of any ambiguity about that matter would necessarily require evidence going to the degree, boundaries and measure of any overlap” and held it was not open to conclude as a matter of judicial knowledge, absent any evidence, that the relevant services, in fact, “plainly overlap”. The Full Court reasoned at [185]–[190]:

The description leasing, letting and rental services was regarded by the primary judge as an aggregation of the services set out at [35](a) to (h) of these reasons. The primary judge also observes that there was “little evidence and attention directed to what most of those services entail”: PJ at [62]. This lack of evidence concerning the content of each of the services and especially the “width” or “scope” of the services comprehended by the phrase commercial real estate agency services makes it difficult to assess whether services, described by the primary judge as rental and letting services or the wider phrase adopted by his Honour, leasing, letting and rental services (as to which see [36] to [44] of these reasons), represent services that are or could be provided by a person providing commercial real estate agency services so as to enable a conclusion to be reached that either rental and letting services or leasing, letting and rental services are “true equivalents” of commercial real estate agency services. Thus, the appellants are left in a position where, in this appeal, they say that “common sense” dictates that commercial real estate agency services and leasing, letting and rental services “plainly overlap”.

The Court may be able to look at the language of a trade mark registration for goods and decide whether, for example, handbags, wallets and purses are (or are not) goods of the same kind as backpacks (one of the questions in issue in Colorado), but the question of whether one service is of the same kind as another or whether some of the component parts of a service are of the same kind as component parts of another service requires an understanding (usually by reference to evidence) of the content of the service in question and ultimately findings about that matter based on the evidence.

It should be noted, however, that as a matter of principle at least, the primary judge ought to have made findings about the content of the services described as commercial real estate agency services (for which first use was found in CHL) and have then considered and made findings about the content of each of the other Class 36 services (see [3] of these reasons) and each of the Class 43 services (see [4] of these reasons) for which each trade mark was registered so as to then be in a position to decide and find whether any and if so which of those services are “true equivalents” of commercial real estate agency services.

The primary judge did not take that course because his Honour concluded that no distinction existed between a number of the services and thus many of them could be treated as falling within the description rental and letting services and in a wider sense leasing, rental and letting services while others, “commercial real estate agency” services and “hotel” services represented quite different services. That was an evaluative judgement the primary judge made by looking at the descriptive language selected for each service within the Class 36 and Class 43 services doing the best his Honour could in the face of “little evidence” or “attention” directed to the content of each service.

It might well be open to conclude, as a matter of language, that no apparent distinction exists between services described as: apartment letting agency services; apartment rental services; rental of accommodation services; rental of apartments services; accommodation letting agency services (holiday apartments); accommodation reservation services and booking services for accommodation. However, it would in any event remain necessary to make findings as to whether those services (or any aspect of the content of those services) are true equivalents of commercial real estate agency services. The primary judge regarded commercial real estate agency services as something quite different from the other categories of services represented by the cluster, leasing, rental and letting services, and hotel services.

We do not accept that it is open to conclude as a matter of judicial knowledge, absent any evidence, that the relevant services, in fact, “plainly overlap”. One imagines that there is some degree of overlap between “commercial real estate agency services” and aspects of some of the other services but the degree, boundaries and measure of the overlap are unclear. It seems to us that the resolution of any ambiguity about that matter would necessarily require evidence going to the degree, boundaries and measure of any overlap.

Optum argued (and Singtel disputed) that this reasoning is equally applicable to the present case. It was submitted that the present case is not one where, as a matter of language, it is clear that the services in respect of which prior use is claimed by Singtel and the designated services in Optum’s trade mark applications are true equivalents.

(2)    Prior use relied on by Singtel

29    Singtel’s case was that, before the priority dates, it was involved in the healthcare sector and promoted a range of services by reference to the OPTUS word mark that were the same as the designated services in Optum’s trade mark applications. Singtel claimed that the trade mark use of the OPTUS word mark in relation to such services was evidenced in the following documents:

(a)    a slide presentation entitled “IBS/NCS Story”;

(b)    a letter on “Optus branded letterhead” and a proposal that Singtel put to the Australian Dental Association for preferred supplier of information technology and technology service;

(c)    a proposal that Singtel jointly with iSoft put to Healthscope;

(d)    a slide presentation to Healthe;

(e)    four (draft) expressions of interest to submit tenders to NSW Health; and

(f)    a slide presentation entitled “NSW Health and Singtel Optus”.

30    Singtel also relied on evidence that it adduced from Anton Donker, Anthony Hudson, Christopher Woods, Peter Kirk and Evdoxia Karakasidis.

“IBS/NCS Story”

31    The IBS/NCS Story is a slide presentation dated 2005 which, on its face, is a promotional document for Singtel promoting the experience and credentials of Singtel and its wholly-owned subsidiary National Computer Systems (“NCS”) in the healthcare sector in respect of a broad range of services. On the right-hand side of each slide is a stylised form ‘yes’ OPTUS (which was used by Singtel as its corporate logo at the time) and there is reference to “Optus” throughout the document.

32    The document promoted “The Optus team for Health Solutions” led by “Optus Integrated Business Solutions IBS” and “[u]tilising [the] expertise of … NCS for system development and implementation”.

33    One slide promoted that NCS was “working with Optus to address IT services market [sic.]” with a “[t]otal solutions approach” and “[e]nd-to-end solutions” covering:

•    Infrastructure

•    Applications and services

•    Business processes

•    Overall project management

34    The slide headed “Optus experience in Health systems” listed the following bullet points:

•    200 professionals serving the healthcare & life sciences sector.

•    Credentials include:

Health information management

•    Business process harmonisation reengineering

•    Hospital and clinic information systems implementation

•    ERP system implementation

•    Pre-care and post-care systems implementation

•    Public Health systems implementation

•    Infrastructure implementation and management

•    Total outsourcing including application management, managed services, data centre, helpdesk and business continuity.

•    IT on Tap.

35    Another slide headed “NCS Healthcare Solutions – Across the Continuum of Care” listed “Electronic Health Record”, “Preventive care”, “Disease Management”, “Insurance & Claims”, “Enterprise Resource Management”, “Public Health Surveillance”, “Disease Registry” and “Patient Management”.

36    The presentation highlighted “Our major Health projects” which included NCS’s involvement since 1990 in “the master planning, implementation and maintenances of MediNet, a nation-wide healthcare network linking all the hospitals and related health government agencies in Singapore”, an integrated web-based outpatient administrative system for Singapore Health, and a public health information system in Hong Kong which was said to be “the backbone system for public health information management for evidence based monitoring and surveillance for Hong Kong health authorities” and “included data standardisation, setting up a public health information network and developing an integrated solution comprising an information portal, operation system, document management, data warehousing and data mining”.

37    In a slide headed “Optus current Health projects in Australia”, there was listed, amongst other things, an e-learning trial for WA Health, an “authentication solution for Medicare consumers” for HIC and a National Disease Surveillance Register for the Commonwealth Department of Health.

(i)    Was the IBS/NCS Story presentation made?

38    A factual issue for determination is whether the evidence substantiated that the IBS/ NCS Story presentation was made to NSW Health.

39    This slide presentation was put into evidence through Anton Donker, who worked as a specialist consultant to Singtel from late 2004 to 2008 as part of an “Optus team” which “had a healthcare sector focus”. Mr Donker deposed that in his role with Singtel, he was responsible for providing expert advice and analysis of trends, directions and strategic opportunities in the healthcare sector, as well as presenting various health related project initiatives to prospective clients and companies with which Singtel proposed to work to perform those projects. Paragraph [19] of his affidavit read:

At Tab 2 of Exhibit AD-1 is a file copy of a presentation entitled “The IBS/NCS Story” dated 2005. I made a substantially similar presentation to NSW Health during various tender processes in 2005 which are set out below.

40    The “file copy” of “The IBS/NCS Story” is found at Court Book 5 tab 189. In cross-examination, in answer to a question whether he recalled making just one presentation to NSW Health or more than one during those tender processes, Mr Donker replied “At least one”. Mr Donker was then asked a series of questions which established that the “substantially similar presentation” to which he referred at para [19] of his affidavit was a slide presentation headed “NSW Health and Singtel Optus” (found at Court Book 5 tab 202). Questions were then asked of Mr Donker directed at determining whether the presentation at tab 202 was the presentation that he referred to in the second sentence of para [19] of his affidavit. The exchange included the following (at T66 lines 1-40 and T67 lines 5-25):

All right. Can I ask you to go through in volume 5 of the court book to tab 202. Do you see that’s a presentation headed New South Wales Health and Singtel Optus?---Yes. And you may recall that in your affidavit you refer to that presentation 5 as one that you gave to New South Wales Health in connection with the tender for ITQ190 in 2005. Do you recall saying that in your affidavit?---I’m not sure if this particular one was that, but if it is indeed put that way, then that would be the case.

All right. What I really want to ask you, Mr Donker, is whether you can recall at this point whether that presentation behind tab 202 is the presentation that you’re also referring to in paragraph 19 of your affidavit. Or can you simply not say either way at this point in time?---Sorry. Would you just repeat that?

Yes. I’m asking you whether the presentation that appears behind tab 202 in volume 5 is, in fact, the presentation to which you refer in the second sentence of paragraph 19 of your affidavit? If ..... Mr Docker, you can’t say one way or the other, that is perfectly fine. You should just indicate that her Honour?---I understand that. I was just taking a moment to determine the question. This – this particular presentation was a general presentation to New South Wales Health.

That’s the one behind tab 202?--- Yes, your 202.

Yes?--- ..... I’m unable to know whether that’s the same as the tab 2 of exhibit AD1 simply because of the numbering, hence my reticence. So if - - - Well – I understand your reticence. Let me take you to that presentation. You will find it behind tab 181 of volume 5. So a little earlier in the folder that you have in front of you. 189?---Thank you. That - - - So that is the - - -?---That’s the general one.

Mr Docker, I think you said a moment ago that the presentation behind tab 202 was the general presentation?---No, I was saying I can’t determine which was which with your numbering system. I see. I see. All right?---Thank you. That was the reason for my reticence, that’s all.

I see?---Thank you.

Now, you say in paragraph 19 of your affidavit that you gave a presentation that was substantially similar to the presentation that appears at tab 189 to New South Wales Health in 2005?---Yes.

But you don’t say that you gave this very presentation to New South Wales Health --- No.

And that was the reason for my question was to whether the presentation that you in fact gave may not have been the presentation at tab 202 which you say you did in fact give to New South Wales health in 2005 --- That’s possibly correct, yes.

That may be correct. I see. So you’re agreeing with me, are you, that the presentation that you referred to in the second sentence at paragraph 19 may be that which appears at tab 202 in volume 5 of the court book?---I’m not agreeing with you yet. You’re confusing me with your numbers, for the moment. So if we can take that a little slowly I will be able to answer your question carefully. So - - -

I thought – I’m certainly endeavouring to take it slowly, Mr Donker, but I will endeavour to take it more slowly still?---Yes. Thank you. Okay.

You have the presentation behind tab 202?---I do, yes.

And you say that is the presentation that you gave to New South Wales Health in

2005?---Absolutely.

Yes. In paragraph 19 of your affidavit, you refer to a presentation which you gave to New South Wales in 2005, and you say that that was substantially similar to the presentation that appears at tab 189?---Yes.

And what I’m asking you is whether the presentation behind tab 202 is, in fact, the presentation that you’re referring to in the last sentence of paragraph 19 of your affidavit?---Yes.

41    Whilst Mr Donker ultimately agreed that the presentation behind tab 202 was the “substantially similar presentation” to which he referred at paragraph [19] of his affidavit, it is apparent that Mr Donker had difficulty following the line of questions put to him. Left unclear by the evidence was whether “The IBS/NCS Story” presentation was, in fact, ever made to NSW Health. Senior counsel for Singtel was given leave in re-examination to ask questions directed at this topic. The following exchange occurred:

… are you able to indicate, or not, whether the presentation at tab 189 of the court book was presented? --- Absolutely.

And who was it presented to? --- New South Wales Health staff.

And are you able to indicate whether or not you were involved in that presentation? --- I was, personally

42    In further cross-examination allowed with leave on this topic, the following exchange occurred (at T76 lines 37–56):

Mr Donker, the fact is that, 12 years after the relevant event, you have no recollection, as you sit there in the witness box now, of what presentations were given to New South Wales Health; do you?---That’s not correct.

Mr Donker, if you had believed that the presentation behind tab 189 had been given to New South Wales Health in 2005, then when I asked you whether the presentation behind tab 202 was the presentation referred to in the second sentence of paragraph 19 of your affidavit, you would have said it was not. The presentation, you would have said, was the presentation behind tab 189; wouldn’t you?---You were confusing me with tab numbers; not the detail of which is which.

43    Senior counsel for Optum submitted that the evidence did not establish on the balance of probabilities that “The IBS/NCS Story” presentation was made to NSW Health. It was submitted that Mr Donker’s evidence in re-examination was completely unreliable because if he had any recollection of giving that presentation he would have said so in his affidavit and he would not have answered the questions put to him in cross-examination in the way in which he did. It was also submitted that whilst Mr Donker had said “at least one” in answer to the question whether he made just one presentation to NSW Health or more than one, that was the answer that a person would give if he or she could only recall one presentation and if he could recall two presentations he would have said “at least two”.

44    Senior counsel for Singtel contended that it was not put squarely to Mr Donker that he made the presentation at Court Book 5 tab 202 to NSW Health but not the presentation at Court Book 5 tab 189, and this distinction, in effect, operated as an unstated premise for the line of cross-examination. It was submitted that once the distinction was made plain Mr Donker’s evidence was clear and, despite the forceful second cross-examination, he maintained that he had in fact given the “The IBS/NCS Story” presentation at Court Book 5 tab 189. Furthermore, he did not concede that only one presentation was made. It submitted that the Court should therefore find that Mr Donker did make “The IBS/NCS Story” presentation to NSW Health.

45    Contrary to Singtel’s submission, Mr Donker did not say that he himself made “The IBS/NCS Story” presentation to NSW Health. But it was his evidence that “The IBS/NCS Story” was “absolutely” presented to NSW Health and he was personally “involved” in that presentation. That evidence was not inconsistent with para [19] or his earlier evidence in cross-examination. Furthermore, it was not put to him that “The IBS/NCS Story” was never presented. Accordingly, I do not consider that Mr Donker’s evidence in re-examination was unreliable. I am satisfied on the evidence and find that “The IBS/NCS Story” presentation was made to NSW Health in 2005. For the purposes of showing prior use, it is sufficient to make that finding.

(ii)    Was there trade mark use?

46    Optum next argued that Singtel had not established that the use of the stylised ‘Yes’ OPTUS mark on “The IBS/NCS Story” presentation was trade mark use of the OPTUS mark for the purposes of s 58 because, the argument went, the evidence did not establish that the presentation was anything more than a purely preparatory or preliminary activity to explore whether NSW Health was interested in the services that Singtel might have been able to provide in the healthcare sector.

47    To constitute trade mark use, the mark must be used “in the course of trade”: s 17 of the Act. It is well established that the words “in the course of trade” do not require an actual dealing in goods or services under a mark to show use as a trade mark (Moorgate) but, as the cases illustrate, trade mark use is not established where the evidence does not show use of the mark beyond engaging in some preliminary discussion or taking preliminary steps to ascertain whether to offer to trade in the goods or services under the mark.

48    In Moorgate it was held that the appellant, an offshore entity, had not established prior use of a mark in Australia by the evidence that it had sent packets of cigarettes and associated advertising material displaying a version of the mark to representatives of Philip Morris in Australia in the course of the discussions about the possible introduction of the cigarettes into the Australian market. Deane J (with whom Gibbs CJ, Mason, Wilson and Dawson JJ agreed) said at [22]–[23]:

To establish prior use of the mark in Australia, Moorgate relies upon evidence that, during or in connection with discussions between Loew's and Philip Morris about the introduction of the low tar and nicotine cigarette in Australia, packets of cigarettes and associated advertising material displaying the name "KENT Golden Lights" were handed personally, or in one instance sent by mail, to representatives of Philip Morris in Australia. That evidence indicates that there were at least three occasions on which such cigarette packets and advertising material were so delivered. At the times when those items were so delivered, there was no intention on the part of Loew’s that it would itself trade in the goods in Australia. Nor, for that matter, had it been decided what name would be used if Philip Morris were, under licence from Loew’s, to commence to manufacture and market the goods in Australia at some indefinite future time.

The cases establish that it is not necessary that there be an actual dealing in goods bearing the trade mark before there can be a local use of the mark as a trade mark. It may suffice that imported goods which have not actually reached Australia have been offered for sale in Australia under the mark ... or that the mark has been used in an advertisement of the goods in the course of trade: ... In such cases, however, it is possible to identify an actual trade or offer to trade in the goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade. In the present case, there was not, at any relevant time, any actual trade or offer to trade in goods bearing the mark in Australia or any existing intention to offer or supply such goods in trade. There was no local use of the mark as a trade mark at all; there were merely preliminary discussions and negotiations about whether the mark would be so used. The cigarette packets and associated advertising material were delivered to Philip Morris to demonstrate what Loew’s was marketing in other countries and what Philip Morris might market, under licence from Loew’s, if it decided to manufacture and trade in the goods in Australia and to use the mark locally at some future time. There was no relevant trade in the goods in Australia and the delivery of the cigarette packets and associated material to Philip Morris did not, in the circumstances, constitute a relevant user or use in Australia of the mark ‘KENT GOLDEN LIGHTS’ for the purpose of indicating or so as to indicate a connection in the course of trade between the new cigarettes and Loew’s.

(emphasis added)

Critical to the finding in that case was that there was no evidence to show not only no actual trade or offer to trade in goods but there also was no evidence to show any existing intention to supply the cigarettes.

49    In Settef, McGarvie J held that the use of the mark on sample books and brochures to a prospective distributor did not constitute trade mark use because the negotiations had not advanced beyond preliminary discussions. At pages 417–8, His Honour stated:

[A] mark is used as a trade mark only if it is used with a view to facilitating or promoting the operation of a trading channel which I a business sense had already been opened to Australia. The mark must be used for the purpose of trade … The forwarding of samples and brochures is not sufficient to indicate that Settef was ready and willing to fulfil such orders as it received from Australia. The purpose of these items may well have been to ascertain whether there was a market in Australia sufficient for it to be worthwhile for Settef to export here. Use of the mark in such preliminary discussions would not be a use in the course of trade.

50    In Woolly Bull Drummond J held that unsuccessful efforts to persuade a brewery to produce and sell beer under the trade mark “RAGING BULL” were insufficient to constitute trade mark use. His Honour stated at [40]:

... Though it is not necessary, for there to be such a use of a mark, that there be an actual trade in the sense of the offering for sale and the sale of goods bearing the mark, the owner will not use its mark unless it has so acted to show that it has gone beyond investigating whether to use the mark and beyond planning to use the mark and has got to the stage where it can be seen objectively to have committed itself to using the mark, ie, to carrying its intention to use the mark into effect. [The second applicant] was never able to get beyond attempting to establish a means for the first applicant to use its mark in trade. That does not amount to any use of the first applicant’s mark in trade sufficient to defeat the removal application. It goes no further than discussions preliminary to the first applicant actually committing itself to the use of the mark in the course of trade.

51    Similarly, in Unilever Aust Ltd v Karounos [2001] FCA 1132; (2001) 113 FCR 322 it was held that the mere printing of business cards and letterhead with the mark did not constitute trade mark use where the evidence did not show any commitment on the part of the applicant to supply goods or services under that mark.

52    In contrast, in Buying Systems (Australia) Pty Limited v Studio Srl Gummow J held that obtaining business cards, having letterhead printed and using the letterhead to solicit advertising space for a new magazine to be published amounted to sufficient activity to constitute a relevant use of the mark in Australia for the purpose of indicating, or so as to indicate, a connection in the course of trade between it and the new magazine. His Honour stated that the case was quite different from activities of the nature discussed in Moorgate because it was not a case where those activities occurred without any existing intention to offer or supply the magazine in trade.

53    It is sufficient to constitute trade mark use if it is possible to identify an actual trade or offer to trade in the goods or services bearing the mark, or an existing intention to offer or supply goods or services bearing the mark in trade: Accor at [168]. So too is the use of a mark in “preparatory steps coupled with an existing intention to offer or supply goods [or services] in trade”: Accor at [168]. However, a mere claim of intention to use a mark does not establish intent. Some objective evidence of intent is required: Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278 at [70]–[71].

54    In the present case, there was evidence that by 2005 NCS had been offering non-telecommunication services in the healthcare sector in south-east Asia for over a decade. Those services included: consultancy and health information management, data standardisation, as well as business process review and improvement; implementation of public health, hospital and clinic information systems; implementation of pre-care and post-care systems; implementation of financial billing and claims systems; and implementation of healthcare e-services. According to Mr Donker, who was not challenged on this evidence, the know-how and capabilities of NCS were used for various tenders submitted by Singtel to NSW Health in 2005. The fact that Singtel did submit expressions of interest to NSW Health in 2005 for the provision of various non-telecommunications services objectively shows that Singtel at the time did intend to supply, or offer to supply, such services to NSW Health and the line of cases applying Moorgate are distinguishable on the evidence. Though Mr Donker said in cross-examination that the services that NSW Health would ultimately request for tender were not then finally identified, neither that fact nor the lack of evidence to show that Singtel ultimately participated in the final tender or provided any services to NSW Health derogate from making a finding that the use of the mark was “in the course of trade”. The intention to provide the services promoted, evidenced through the subsequent expressions of interest to NSW Health, was enough to be “in the course of trade”: Accor at [197]

(iii)    Was there trade mark use in connection with particular goods or services?

55    Optum next submitted that trade mark use also requires the use of the mark in connection with the particular goods or services offered, or intended to be offered, for supply: see Accor at [197]–[198]; Shahin Enterprises Pty Ltd v Exxonmobil Oil Corporation [2005] FCA 1278. But here, it was submitted, the presentation was general in nature and if there was use of the OPTUS mark, such use did not relate to a particular service or services. However, that submission is not made out on a consideration of the document itself, which identified a range of particular services being promoted by Singtel to NSW Health as services which Singtel had the capability to deliver.

(iv)    Was there use of the OPTUS mark?

56    Optum then submitted that if there was trade mark use in respect of particular services, the mark used was not OPTUS but the stylised ‘yes’ OPTUS. It was argued the stylised ‘yes’ OPTUS is a composite mark and does not involve the use of the OPTUS word mark on its own. Optum submitted that the addition of the word “yes” to the word “OPTUS” was not like the addition of the image of the bare foot in the BAREFOOT logo which was considered by the High Court in E&J Gallo. Optum also submitted that Singtel’s own conduct in registering the stylised ‘yes’ OPTUS as a trade mark demonstrates that ‘yes’ OPTUS is a composite mark and does not involve the use of the OPTUS word mark on its own.

57    In E&J Gallo, the High Court held that the addition of a device to the registered mark BAREFOOT was not a feature that separately distinguished the goods or substantially affected the identity of the registered trade mark BAREFOOT, because consumers were likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The Court stated at [67]–[69]:

Lion Nathan contended before the primary judge that use of a trade mark consisting of the word BAREFOOT in combination with the device was not use of the registered trade mark, which was the word BAREFOOT simpliciter. The primary judge correctly rejected this submission. The Full Court did not deal with this issue.

In support of this contention Lion Nathan relied on Colorado Group Ltd v Strandbags Group Pty Ltd. The registered trade mark in that case was for the word "Colorado", which, by reason of its geographical significance, was not inherently adapted to distinguish the owner's goods from the goods of other persons as required by s 41(3) of the trade marks Act. As noted by Gyles J, it was difficult to obtain registration of a geographical name as a trade mark under the trade marks Act 1955 (Cth) by reason of s 24(1)(d) of that Act. The trade mark for the word "Colorado" had been used in conjunction with a mountain peak device, which reinforced the geographical connotation of the word. Allsop J found that the mark used was a composite mark and that the mountain peak device was not a mere descriptor but a distinguishing feature.

This is to be contrasted with the position in this case. The addition of the device to the registered trade mark is not a feature which separately distinguishes the goods or substantially affects the identity of the registered trade mark because consumers are likely to identify the products sold under the registered trade mark with the device by reference to the word BAREFOOT. The device is an illustration of the word. The monopoly given by a registration of the word BAREFOOT alone is wide enough to include the word together with a device which does not substantially affect the identity of the trade mark in the word alone. So much is recognised by the terms of s 7(1), which speak of additions or alterations which "do not substantially affect the identity of the trade mark". Except for a situation of honest concurrent use, another trader is likely to be precluded from registering the device alone while the registered trade mark remains on the Register. The device is an addition to the registered trade mark that does not substantially affect its identity. Accordingly, the use of the registered trade mark with the device constitutes use of the registered trade mark in accordance with s 7(1).

    (footnotes omitted)

58    E&J Gallo was applied in Accor. In Accor, the Full Federal Court considered whether the following was a composite mark.

The text below read “A NEW STAR SHINES”.

59    The trade mark was the words “HARBOUR LIGHTS”. The primary judge found that the words “HARBOUR LIGHTS” together with the device and the words “A New Star Shines” formed a composite mark, reasoning that there was a connection between all three parts of the mark because the image of the stars alluded to the word “LIGHTS” in “HARBOUR LIGHTS”, the words “A New Star Shines” alluded to the device and the word “LIGHTS” and the device and the words “A New Star Shines” were not mere descriptors but were distinguishing features. The Full Court disagreed with the primary judge that the addition of the five gold stars in combination with the “de minimis” words “A New Star Shines” “[gave] rise to such a degree of interconnection and allusion, one to the other, as to substantially affect the identity of the trade mark in the words [HARBOUR LIGHTS] alone”. In reaching this conclusion, the Full Court stated that the “depiction” was comprised of three elements. The first element was the trade mark “HARBOUR LIGHTS” which the Court stated, “[a]s an element of the arrangement of the three features”, was the dominant cognitive cue because those were the words, or mechanism by which, a person seeking out the relevant services would recognise a way of connecting with the person providing the services in the course of trade. The second element was the line of five stars, which the Court said, the reader might well be invited to think that “HARBOUR LIGHTS” embodied, in relation to the relevant services, qualities conventionally or often anecdotally described as “five star”. The third element was “the barely noticeable piece of text, “A New Star Shines” sitting under the words “HARBOUR LIGHTS””. The Full Court, after reference to paras [67]–[69] of E&J Gallo, held that if the five gold stars appearing above the words “HARBOUR LIGHTS” qualified as a device (which their Honours “strongly” doubted) the “device” did not substantially affect the identity of the trade mark in the words “HARBOUR LIGHTS” alone, reasoning that the device was “simply an addition to the registered trade mark with the result that use of the trade mark with the five gold stars nevertheless constitute[d] use of the registered trade mark for the purposes of s 7(1) of the Act”. I note that an application for special leave by the respondent Liv Pty Ltd which raised the correctness of this conclusion was dismissed: Liv Pty Ltd & Ors v Accor Australia & New Zealand Hospitality Pty Ltd & Anor [2018] HCATrans 33.

60    In the present case, the word OPTUS in the stylised ‘yes’ OPTUS is still the distinctive element and the dominant cognitive cue and I do not consider that the presence of the word ‘yes’ substantially affects the identity of the registered OPTUS mark alone. To the contrary, the word ‘yes’ directs attention to the word OPTUS as a badge of origin with respect to the services promoted by Singtel. The separate registration of ‘yes’ OPTUS as a trade mark does not detract from this conclusion or compel any conclusion to the contrary. I accordingly accept that the use of the stylised ‘yes’ OPTUS constituted a use of the word mark OPTUS.

61    Moreover, Optum’s submission ignores the appearance of the word “Optus” by itself throughout the slides. Use of a mark as a trade mark is use as a badge of origin in the sense that it indicates a connection in course of trade between the goods or services in relation to which the mark has been used and the person applying the mark: E&J Gallo at [43]. The question of whether there has been use of the mark as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. In Woolworths v BP, Heerey, Allsop and Young JJ stated at [77]:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin. ...

See also Accor at [228]. Optum argued that the word “Optus” was used as a business name in the slides, not as a trade mark. I disagree. Viewed objectively in the context of a promotional slide about Singtel’s credentials and experience in the healthcare sector in respect of a broad range of services, it seems to me that the word ‘Optus’ was not merely being used as a business name but was also being used as a badge of origin in respect of the types of services being promoted.

62    Singtel further submitted that it is readily to be inferred that Mr Donker and other people present from Singtel said “Optus” during the presentation in connection with the services there described. In Scandinavian Tobacco Group Eersel BV v Trojan Trading Co Pty Ltd [2016] FCAFC 91, the Full Court emphasised the different ways a trade mark can be used which do not involve physically applying the mark to the goods. At [63], the Court stated:

trade mark use can also occur in relation to goods in print and electronic advertising, invoices, bills of lading and other commercial documents, or even in conversations between a salesperson and a customer, in many different markets involving the supply of all manner of goods.

(emphasis added)

The same principle would apply to services and given the extensive reference to the word “Optus” in the slides, such an inference is open to be drawn. However, if I am wrong that the word “Optus” is used in the slides as a trade mark, not as a business name, the drawing of such an inference would not advance Singtel’s claim that the word “Optus” in that context was used as a trade mark.

(v)    Whether there was use of the OPTUS mark in relation to services offered by Singtel

63    Finally, Optum argued that the slides did not establish the use of the OPTUS word mark in relation to the services promoted, as many of the services identified were services provided by NCS, not by Singtel. Singtel, however, was promoting the services that it could provide which, relevantly, included the skills and expertise that could be brought to bear by NCS. Mr Donker gave the following evidence in cross-examination:

If you want to use the court book numbering, it’s 5.306. You will see the heading, there, “Optus experience in health systems”. And is it recalled with your recollection that what’s actually described there is the experience of NCS in health systems?---No. Optus and NCS are part of the same group. You have combinations of experience that Optus is bringing to Optus’ availability.

This was also shown by the references in the document itself – “Optus and NCS”; “NCS working with Optus…” and “what Optus can do for governments”.

(vi)    Conclusion

64    In conclusion, I am satisfied that the OPTUS word mark was used as a trade mark in the IBS/NCS Story slide presentation.

(vii)    Whether the services were the same, or of the same kind, as the Optum designated services

65    The next question is whether “the IBS/NCS Story” presentation shows use of the word OPTUS as a trade mark with respect to services that are the same, or of the same kind, as any of the designated services in Optum’s trade mark applications. Singtel’s primary case was that the services are the same because the presentation promoted a broad range of services described by reference to a range of activities, including “Change Management”, “Technology Consulting”, “Application Development”, “Systems”, “Network”, and “Infrastructure” integration and “Application”, “Facilities” and “Business Process” management and with reference to more particular types of offerings, especially in relation to: electronic health records and insurance and claims as shown by the MediNet system, comprising the “key applications” of the “National Patient Master Index” and the “Central Claim Processing System”; integrated hospital and clinical information systems, such as “Outpatient Administrative System”; and information management covering “Electronic Medical Record Exchange” (the sharing of electronic medical records across public hospitals and clinics, as part of a “controlled exchange of essential patient medical information”) as well as the “Public Health Information System” project (the establishment of a “public health information network … comprising an information portal, operation system, document management, data warehouse and data mining”). It also highlighted Singtel’s then current health prospects for WA Health (an e learning trial), the HIC (including an “authentication solution for Medicare customers”) and a “National Disease Surveillance register” for the Commonwealth Department of Health.

66    It was submitted that the document is substantial evidence of the services offered by Singtel under, and by reference to, the OPTUS mark in respect of a broad range of services related to the healthcare industry.

67    I am satisfied that the presentation evidences use of the OPTUS word mark as a trade mark in relation to services relevant to the healthcare sector. However, this is not a case, in my view, where it can be said just on the description of the services that the services are the true equivalent of any of Optum’s designated services. I think there is insufficient detail provided in the presentation about the nature and content of the services on offer to determine whether there is little or no difference between the character of those services which Singtel was promoting and the designated services in Optum’s trade mark applications. In my view, this is a case such as Accor where the types of services may well overlap but “the degree, boundaries and measure of the overlap are unclear” based just on the content of the presentation because the relevant services are too generally and broadly described in that document.

68    In Anchorage the Full Court stated at [78] that the Court is entitled to look beyond the document in which prior use is claimed for the purposes of determining what services were being offered. In this regard I do not think that Mr Donker’s evidence about the non-telecommunications services which NCS had been offering in the healthcare sector in South East Asia advances the matter any further because those descriptions are also too general and broad. But before reaching a concluded view, it is relevant to note that the evidence was that the presentation was a general presentation made to NSW Health during the tender processes and prior use of the OPTUS word mark is also claimed in connection with Singtel’s response to the NSW Health Tender IT-188 and the NSW Health tender IT-190. Accordingly, before any concluded view is reached on whether the services identified in the IBS/NCS Story presentation are the same, or of the same kind as, the designated services, it is necessary to consider Singtel’s response to the NSW Health Tender IT-188 and the NSW Health tender IT-190.

NSW Health Tender IT-188

69    Mr Donker’s evidence was that in July 2005, Singtel submitted a response to NSW Health’s request for tender for the establishment of data centre and application development and support for methodologies and tools for the development and transfer into production of new systems and services. Singtel tendered for four distinct product and service bundles, which Mr Donker described as follows:

(a)    Project Management Office: this bundle included provision of project management methodology, management advice to support Health NSW in managing and developing their staff; ICT and systems integration advice and project delivery services;

(b)    Data Centres: Singtel tendered to advise New South Health on how to establish and operate data centres and to assume responsibility for rationalising and then operating data centres;

(c)    Desktop, communications and service desk: this bundle included integrated service desk services, management and support for desktop IT (including automation, remote support and web portal services); and

(d)    Application, development and support: Singtel tendered to provide NSW Health with application development and support services. Mr Donker stated that these were not traditional telecommunication services. Under this bid, Singtel offered to provide NSW Health with an IT study to NSW Health to evaluate the then current application environment with the aim of advising on approaches to be undertaken for rationalising legacy systems and subsequent development of future applications; and application development services and ongoing support.

70    Mr Donker was involved in the preparation of the tender documents and was part of the joint Optus and NCS team that prepared and presented to NSW Health. Annexed to his affidavit are copies of drafts of Singtel’s Expressions of Interest in respect of these tenders. Also exhibited is a copy of a briefing note he prepared for Singtel in relation to its internal discussion regarding the NSW Health tender. Singtel has relied on those documents to show prior use of the word OPTUS as a trade mark.

71    Optum submitted that the evidence did not establish the services in respect of which trade mark use was claimed because the documents in evidence were only drafts, and Mr Donker agreed in cross-examination that the final versions would not have been in substantially the same form as many parts of the draft documents were incomplete. He also agreed that the content of the final versions of those documents may well have been different to the content of the draft documents, and agreed that he could not recall whether he saw a final draft of each document. Whilst, however, the documents were obviously only in draft form and incomplete, they were expressions of interest in relation to the provision of identified services for NSW Health. Furthermore, Mr Donker explained the nature of those services in his affidavit and he was not challenged on that evidence nor was it put to him that his description of the services in respect of which the expressions of interest were submitted was wrong. Nor was he challenged on his evidence that the four expressions of interest were actually submitted. I therefore accept that the evidence sufficiently established that Singtel was promoting the services in the healthcare sector of the kind described by Mr Donker.

72    Next, Optum submitted that the documents were purely preparatory or preliminary ahead of a tender. It was put that Mr Donker accepted in cross-examination that the services to be requested for tender had not been finally identified at the time that the expressions of interest were submitted and there was no evidence that Singtel in fact participated in the subsequent tender. The fact of submitting expressions of interest, however, indicates that Singtel did intend to offer services of the nature in respect of which it submitted expressions of interest.

73    Next, Optum submitted that as there was no evidence as to the final form of the documents, the evidence did not establish what, if any, trade mark was used. That submission is not accepted either. Although none of the draft documents contained the OPTUS mark, in each document one of the matters for completion in the final draft was to “place company logo graphics in header if available”. The evidence of Evdoxia Karakasidis, who worked at Singtel between 2008 and 2015 in various positions in marketing, was that the corporate logo at the relevant time was ‘yes’ OPTUS. It may reasonably be inferred that the corporate logo was in the final form of each expression of interest, including the expression of interest for Desktop, Communications and Service Desk consistently with the other documents (which in the draft form as part of the marking up had a line through “place company logo graphics in header if available”). The word “Optus” also appears throughout in a manner that indicates that the word was not merely being used as a business name but was also being used as a badge of origin. Moreover, as earlier concluded, use of ‘yes’ OPTUS constituted use of the registered OPTUS mark.

74    The question then for determination is whether the services as described by Mr Donker for which Singtel submitted expressions of interest are true equivalents of the designated services in Optum’s trade mark applications. Once again, such services may well have overlaps with Optum’s services but, in my view, it is not evident just as a matter of language there are services that are true equivalents. Furthermore, the descriptions given by Mr Donker of the services offered by Singtel were also too broad and generalised to identify the precise nature and character of those services and the evidence does not enable a finding to be made that such services are the true equivalent of any of Optum’s designated services listed in Schedule B.

NSW Health Tender IT-190

75    Mr Donker gave evidence that in 2005 NSW Health also requested expressions of interest for the supply of an EMR Solution (Electronic Medical Record – Point of Care Clinical System). This was a solution to support the clinical care process by enabling health professionals (doctors, nurses, allied health professionals etc.) to review and access patient health records, dispense medications, generate and monitor the progress of a clinical pathway. Mr Donker’s evidence was that Singtel, together with iSoft PLC (“iSoft”), tendered to provide the EMR Solution including: (1) iSoft supplying the EMR software and product installation, customisation, training and ongoing software support services; (2) Singtel’s Integrated Business Solutions unit providing infrastructure setup, hardware provision, system software, hosting, service desk, onsite maintenance, end-to-end management, reporting and billing services; and (3) Singtel via NCS providing project management, implementation studies (with iSoft), enterprise architecture, development and customisation, integration to other hospital systems, migration and implementation services.

76    Mr Donker deposed to a presentation in June 2005 to NSW Health to outline its core competencies and to promote its experience beyond telecommunications and to market how its consumer, mobile, IT integration, operations and partnering experience could assist the NSW Health agenda. Mr Donker’s evidence was that in this presentation, Singtel pitched several new innovative service capabilities that could be relevant to NSW Health including: (1) an integrated hospital/clinic information system, including the management of patient records, appointment scheduling, financial management and patient billing and cash management; (2) e-services, including e-appointment, e-billing, e-pharmacy, e-learning, e-CRM and e-licensing; (3) a professional support system, including order and entry results reporting, an electronic medical record exchange, population care systems and a kidney transplant management system; (4) a health information management system, including a public health information reference model and a public health data dictionary; (5) a national/public health system, including a national patient master index, central claims processing, national disease registries and a student health management system; and (6) a licensing and regulatory system, including pharmaceutical and medical device regulatory information systems, quality enhancement and surveillance system and an adverse drug reaction registry.

77    Mr Donker exhibited a presentation that Singtel made to NSW Health at the time, being the presentation at Court Book 5, tab 202 titled “NSW and Singtel Optus”. The presentation showed the ‘yes’ OPTUS mark and identified the “solutions for the future” covering a range of different services applicable to the healthcare sector including “Integrated Hospital/Clinical Information System”, “Health Information Management”, “Professional Support System”, “E-Services”, National/Public Health Systems” and “Licencing & Regulatory Systems”.

78    Optum argued that there was no trade mark use because Mr Donker’s evidence about Singtel pitching to NSW Health indicated that Singtel was merely exploring whether there was a market for the services and there was no evidence that the services were in fact provided. I reject that submission. Once again, the content of the presentation shows that the proposal was more than just investigative, but was an offer to supply such services to NSW Health.

79    Optum again argued that use of ‘yes’ OPTUS was not use of the OPTUS mark and for the reasons earlier given I have rejected that submission.

80    However, I do not accept that it is open to conclude as a matter of language that there is no distinction between those services and designated services in Optum’s trade mark applications. Nor is it open to conclude on the face of the available evidence that the services promoted in that document (as elaborated on by Mr Donker) are the true equivalent of designated services in Optum’s trade mark applications for the same reason that the descriptions are too broad and general to identify the nature and character of the actual services being promoted.

81    Accordingly, I also conclude that the evidence identifying the services in respect of which Singtel submitted expressions of interest to NSW Health does not advance the question as to whether any of the services listed in the “IBS/NCS Story” are true equivalents of the designated services in Optum’s trade mark applications.

Australian Dental Association (NSW)

82    Mr Donker gave evidence that in or around February 2005, in his capacity as a specialist consultant to Singtel, he worked with Adam Hatcher, an account manager at Optus Business, and Vivien Rowland, Singtel’s then National Sales Development Manager Health, on preparing a partnership proposal which was put to the New South Wales branch of the Australian Dental Association on behalf of Singtel. The proposal included Singtel’s traditional broadband, IT security and telecommunications services to be supplied to the members of the Australian Dental Association and also offered access to a specialist portal and web services such as online office for dentists which would be developed for the Australian Dental Association (NSW). Mr Donker deposed that additionally Singtel would deliver e-learning applications developed in partnership with the Australian Dental Association and EFTPOS facilities and this also involved the provision of hardware and software.

83    The proposal did not proceed but Mr Donker recalled attending at least one presentation given to the Australian Dental Association by Singtel in or around 2005 in respect of the proposal. In evidence was a file copy of a letter sent to the Australian Dental Association in February 2005. Although the copy is not on letterhead, Mr Donker stated that when it was sent, it was sent on Optus branded letterhead. Also in evidence was a copy of the proposal that Singtel put to the Australian Dental Association for preferred supplier of information technology and technology service. The ‘yes’ OPTUS mark appears on each page.

84    The letter stated that:

The Optus Business solution includes:

•    A “Standard IT&T Package” designed to meet dental practice and dentist needs, incorporating Broadband, IT Security and Telecommunications;

•    special access to hardware, software and related products;

•    Extension of these benefits to Practice employees where relevant;

These solutions for your members will be complemented by our wider partnership to review and expand the ADA(NSW) member services and offerings through:

•    e-Learning technologies to enable ADA(NSW) to expand and position these services with its members;

•    effective use of existing and emerging technologies and services, such as SMS, mobile services, specialist portal and web services, etc.

85    The executive summary in the proposal similarly promoted such services. The Optus Business Solution was identified as a package that offered fast internet access through Optus Business Broadband, IT Security and Services, Helpdesk, Remote Management, landline services and mobile services and additional hardware and software services to dentists. The key benefits of the “Solution” were said to include the “ability to implement and deliver e-learning technologies via fast internet access” and the key advantages were said to include “[e]nables on-line education and training” and “enables access to electronic academic library”.

86    Optum raised the same arguments that:

(a)    there was no trade mark use because the documents did not evidence the provision or offering of any services but rather the use was only in the context of purely preparatory steps to investigate whether to offer such services; and

(b)    if there was any trade mark use, the mark used was ‘yes’ OPTUS.

87    Neither argument is accepted. First, it is apparent from both the covering letter and the detailed proposal that Singtel was offering to provide the services that it was promoting. Secondly, the reasons for rejecting the argument in relation to the IBS/NCS Story slide presentation that use of the stylised ‘yes’ OPTUS mark was not use of the OPTUS word mark equally apply here.

88    Optum also argued that if there was any trade mark use, that use was properly characterised as telecommunications services, referring to the following (italicised) statement in the executive summary in the proposal:

The proposal represents the first step in a partnership between Optus and ADA(NSW).

It provides a range of core telecommunications and technological services for members and a platform for the shared development of future services which will help cement the longer term value the ADA(NSW) represents to its members.

(italicised to highlight the relevant part relied on)

89    I agree. The descriptions in both the letter and the proposal about the services offered were about the provision of telecommunications and technological services. Accordingly, whilst I accept trade mark use of the word OPTUS in relation to such services, I do not accept that such services are the true equivalents of any of the designated services in Optum’s trade mark applications.

iSoft

90    Another project of Singtel in the healthcare sector was with iSoft. iSoft specialised in hospital systems (patient administration, clinical, pharmacy, emergency theatre, laboratory services), practice systems for primary care, and medical record technology. Mr Donker deposed that between 2005 to at least 2007, Optus Networks Pty Ltd (“Optus Networks”), a wholly-owned subsidiary of Singtel, partnered with iSoft to address business opportunities in the healthcare sector. Singtel’s role in this project with iSoft was as an application software provider in order to deliver iSoft’s healthcare applications to public and private health sector clients. Mr Donker explained in his affidavit that the Optus and iSoft partnership was to work together in relation to the development and provision of: health applications, software including hospital systems, community, public health, practice management and diagnostic systems; services oriented architecture for solutions from consumer to health service provider settings; and specialist business process, integration, installation, operation and related services for health systems. Mr Donker stated that Singtel’s partnership with iSoft was predominantly exploratory in nature to assess the viability of the parties offering complete (bundled) solutions for the healthcare sector. As part of this exercise, Singtel and iSoft jointly approached and made presentations to enterprise-level clients in Australian and New Zealand healthcare, including most State Government health departments, private health operators and the Australian Government. Mr Donker exhibited a copy of the agenda from the Singtel and iSoft Health Teaming Project meeting which took place on 16 June 2005.

91    Mr Donker deposed that in July 2005, as part of the partnership with iSoft, Singtel together with Optus Networks presented a proposed hosted delivery model for the provision of a patient administration system (“PAS”) solution to Healthscope, a private hospital group. Mr Donker’s evidence was that he was a member of the joint Singtel and iSoft team and was involved in presenting this project with a representative from iSoft to Healthscope representatives in Melbourne. Mr Donker recalled that they presented a Microsoft PowerPoint presentation at this meeting, although he no longer has a copy of the document. His evidence was that the presentation was co-branded with the OPTUS trade mark and the iSoft trade mark. He was not challenged on that evidence.

92    Mr Donker stated that “the PAS software was to be provided as a service (software as a service) along with application management, maintenance and implementation services”. Singtel’s involvement in this project was through Singtel’s integrated business solutions unit which was responsible for the overall management of the development and implementation of the PAS solution for Healthscope. This included infrastructure provision, operating system software, security, hosting and infrastructure management, operating system management, telecommunications links, storage, service desk (telecommunications and infrastructure services), billing and reporting; and, through NCS, services were to be supplied to integrate the hosted PAS solution to Healthscope’s existing systems.

93    Exhibited to his affidavit was a copy of the joint Optus and iSoft proposal to Healthscope in draft form which showed the stylised ‘yes’ OPTUS mark on each page. Mr Donker agreed in cross-examination that he was not able to say whether the final version was in substantially the same form.

94    Optum relied on Mr Donker’s evidence that Singtel’s partnership with iSoft was predominantly exploratory in nature to assess the viability of the parties offering complete (bundled) solutions for the healthcare sector to argue that the presentation was a purely preparatory act or activity and there was not trade mark use of the OPTUS word mark. However, the proposal notes that the PAS “solution” detailed in the proposal which was being marketed to Healthcare was one that Singtel and iSoft had developed for Healthcare, indicating that the “solution” was not just a concept at the planning stage but one that Singtel and iSoft was offering or intended to offer Healthcare, if it was interested.

95    Next, Optum argued that Mr Donker’s evidence that the presentation was co-branded with the OPTUS trade mark did not constitute evidence of use of the mark as a trade mark, particularly given the range of OPTUS trade marks, including the stylised ‘yes’ OPTUS mark, in use. The presentation does use ‘yes’ OPTUS which, as I have earlier concluded, constituted use of the registered OPTUS mark. It is also reasonable to infer from the many references to “Optus” in the document that the word was not just used as a business name but also as a badge of origin.

96    Singtel also put the same argument that it is readily to be inferred that Mr Donker and the other people present from Singtel said “Optus” during the presentation in connection with the services there described. It is open to draw that inference as the presentation itself contains many references to “Optus”. However, if I am wrong that OPTUS was used as a trade mark in the slide presentation, the drawing of such an inference would not advance Singtel’s claim that OPTUS was used as a trade mark just because the word “Optus” was used in the oral presentation. It would be equally open to conclude in that circumstance that any reference to “Optus” in the oral presentation was merely use of a business name.

97    Finally, Optum submitted that if there was any trade mark use, that use was properly characterised as use in relation to a hosted delivery model for the provision of a patient administration system. I agree. It is not apparent on the face of the material that this “service” is the equivalent of any of the designated services specified in Optum’s trade mark applications.

Healthe

98    Another project was with Healthe International Pte Limited (“Healthe”). In 2005, Mr Donker was engaged as a consultant to Healthe (whilst also being a consultant at Singtel) which, at the time, owned approximately 12 private specialist hospitals in Australia. Healthe also focused on patient health management and was involved in providing health related online portals during the 2004 Summer Olympic Games. Mr Donker introduced Healthe to Singtel to work on a collaboration to offer similar online services to enable patients to look after their own health.

99    Mr Donker’s evidence was that he attended a presentation made by Healthe to Singtel in November 2005 “to explore joint implementation and delivery of a personalised health management system as an online portal accessible via a mobile phone”. He stated that it was proposed that this portal would have included electronic medical records, personal health records, health expenditure calculators, loyalty and reward programs and health risk assessments. Mr Donker stated that whilst this project did not proceed, he presented Singtel’s and Healthe’s joint offering to the Queensland Government officials in the health sector on several occasions in 2005 and whilst he no longer had copies of those presentations he recalled at the meetings they used Microsoft PowerPoint presentations co-branded with the Optus trade mark and the Healthe trade mark. He was not challenged on that evidence.

100    In evidence was the presentation which used ‘yes’ OPTUS on the front slide.

101    Optum argued that there was no trade mark use of the OPTUS word mark because the presentation was purely preparatory “to explore” entering into a joint project. That contention is not supported by Mr Donker’s evidence which sufficiently indicates that Singtel and Healthe intended, and were offering, to provide the services that they were promoting.

102    Optum also argued that Mr Donker’s evidence that the presentation was co-branded with the OPTUS trade mark did not constitute evidence of use of the mark as a trade mark, particularly given the range of OPTUS trade marks, including the stylised ‘yes’ OPTUS mark, in use. The presentation does use ‘yes’ OPTUS though, which I have earlier concluded constitutes use of the registered OPTUS mark.

103    However, whilst it may be open to say from the descriptions that there is a degree of overlap with Optum’s designated services, I do not accept that it is open to conclude on the face of the available evidence that the services promoted in that document (as elaborated on by Mr Donker) are the true equivalent of any of the designated services in Optum’s trade mark applications. Once again the descriptions are too broad and general to identify the nature and character of the actual services being promoted.

Sonic Healthcare

104    As Singtel did not identify that it relied on this part of Mr Donker’s affidavit in support of its s 58 ground, I do not deal with it.

Electronic Medicare Claiming and Payment Services

105    As Singtel’s response to Optum’s submissions on evidence in relation to the s 58 ground stated that Singtel relied on the evidence of Mr Hudson, not Mr Donker, in relation to this item, I do not deal with it here.

Optus HealthVault

106    As Singtel did not identify that it relied on this part of Mr Donker’s affidavit in support of its s 58 ground, I do not deal with it.

The Royal Flying Doctor Service of Australia

107    As Singtel did not identify that it relied on this part of Mr Donker’s affidavit in support of its s 58 ground, I do not deal with it.

i-Med

108    As Singtel did not identify that it relied on this part of Mr Donker’s affidavit in support of its s 58 ground, I do not deal with it.

Optus Healthpoint

109    Mr Hudson’s evidence was that he was employed by Singtel and its related entities for approximately 23 years from 1993. In 1996, he held the position of Senior Account Manager – Federal Government, with responsibility for Singtel’s business relationship with the Health Insurance Commission (now known as Medicare). He identified a business opportunity for Singtel to develop and supply an e-health business solution for the Health Insurance Commission to streamline the processing of Medicare claims and payments. The system was known as “Optus HealthPoint” and was the first e-solution for billing in the health industry. Mr Hudson deposed that Optus HealthPoint was an EFTPOS terminal based non-internet system which used an EFTPOS terminal and modem with a laser printer on the Optus X.400 network to transfer bulk-billing claims for fees payable under Medicare and Veterans’ Affairs from doctors to the Health Insurance Commission.

110    Singtel launched Optus HealthPoint in August 1997. Mr Hudson’s evidence was that Optus HealthPoint was marketed to health professionals “under and by reference to the Optus and OptusHealth Point brands” and he recalled that the Optus HealthPoint terminals which were placed in optometrists’ and doctors’ surgeries “featured the OPTUS mark”. Exhibited to his affidavit were media reports at the time about the launch of Optus HealthPoint and photographs of these terminals, which showed use of what appears to be the following mark:

(“the OPTUS communications logo”)

111    The OPTUS communications logo was the then corporate logo for Singtel.

112    Mr Hudson also gave evidence that by around July 1999 Singtel had installed over approximately 2,000 Optus HealthPoint systems in doctors’ surgeries around Australia and by the year 2000 Optus HealthPoint facilitated both electronic lodgement and processing of health insurance items including claims for medical bills and immunisation reporting (through the Australia Childhood Immunisation Registry), receipt of printing of pathology and radiology reports. Singtel also extended Optus HealthPoint to permit health fund members to lodge on-the-spot claims when they visited a dentist or an optometrist and to use their own credit card to pay the gap cost to the provider.

113    Optum made the following points about this evidence. First, it was submitted, the branding under Optus HealthPoint was not use of the OPTUS word mark. Secondly, it submitted, his evidence that Optus HealthPoint was marketed to health professionals under “the Optus brand” did not establish the use of the OPTUS word mark as a trade mark as he did not say that it was marketed under the OPTUS word mark. Likewise his evidence that the Optus HealthPoint terminals “featured the OPTUS mark” did not establish the use of the OPTUS word mark as a trade mark as he did not say that it was the OPTUS word mark that was used and, it was argued, it was more than likely on the evidence that the mark that Mr Hudson was referring to was the Optus Communications logo which was not the same as OPTUS word mark. Thirdly, having regard to Mr Hudson’s evidence about Optus HealthPoint as an EFTPOS terminal based non-internet system, the trade mark use of the word mark (if found) was properly characterised as use in relation to a terminal-based system for the transfer of bulk-billing claims and not a use in relation to a wider class or category of goods or services.

114    I do not accept that Mr Hudson’s evidence has established use of the OPTUS word mark as a trade mark. First, whilst Mr Hudson was not cross-examined, his evidence that Optus HealthPoint was marketed to health professionals under “the OPTUS brand” was no more than a bare assertion without providing any factual foundation other than his recall that the terminals featured the OPTUS mark. Secondly, the OPTUS mark featured on the terminals appears to be the OPTUS Communications logo. Thirdly, the evidence before me does not enable a finding to be made that the OPTUS Communications logo was used as a badge of origin, not just as a means for identifying Singtel by its corporate logo.

115    If I am wrong, and there was trade mark use of the word “OPTUS” on the terminals or in the marketing of Optus HealthPoint, I agree with Optum that the evidence did not establish a wider category of use than use in relation to a terminal based system for the transfer of bulk-billing claims. Singtel argued that Optum’s characterisation overlooked Mr Hudson’s evidence in which he stated that the e-business solution system was “developed” by Singtel with input from the Australian Medical Association, the Health Insurance Commission and a Sydney-based software developer. However, the evidence did not go so far as to establish trade mark use of the OPTUS word mark in connection with the development of that system. Whilst Mr Hudson gave evidence about Singtel’s development of the system, his evidence about use was confined to the promotion and provision of the Optus HealthPoint system. If the finding was made of the (limited) trade mark use in relation to a terminal-based system for the transfer of bulk-billing claims, it is not readily apparent from the description alone that such use was in connection with services that are the true equivalent of the designated services in Optum’s trade mark applications. Nor did the evidence sufficiently identify the content of the services to enable such a conclusion to be formed.

inCITE

116    Evdoxia Karakasidis worked at Singtel between 2008 and 2015 in various positions in marketing. In this context, Singtel relied on evidence she gave about a contract that Singtel was awarded in 2002 by the Construction Industry Trading Exchange to develop and manage an online construction, industry trading exchange which enabled clients, owners, consultants, contractors, subcontractors and suppliers in the Australia construction industry to manage project delivery electronically, including document management, tendering and purchasing of construction services and products (“inCITE”). inCITE was part of the Singtel “related experience” referred to in the IT-188 expression of interest tender to NSW Health for the Project Management Office which included the provision of “ICT and Systems Integration Advice” which involved developing “innovative, effective IT and communications engineering solutions across all platforms in the Health and other industries to achieve maximum results for businesses”. Ms Karakasidis’s evidence, in conjunction with Mr Donker’s evidence relating to the expression of interest submitted regarding the proposal for project management services, and with Mr Hudson’s evidence, was said to establish use of the OPTUS trade mark in relation to services which are the same, or of the same kind as the services the subject of Optum’s trade mark registrations in relation to items (7), (8), (22), (24), (26), (33), (41) and (42). The difficulty with this contention is that Ms Karakasidis’s evidence about the contract Singtel was awarded with the Construction Industry Trading Exchange does not sufficiently identify the nature and scope of the services provided. It is not obvious as a matter of language, or from the available description, that the services are the same, thus requiring more detailed evidence about the nature and scope of such services to enable a comparison to be undertaken and a conclusion reached as to whether they are, in fact, true equivalents.

Insurance

117    Evidence was adduced from Christopher Woods a manager of Optus Insurance Services Pty Ltd (“Optus Insurance Services”) which is a wholly owned subsidiary of Singtel. Mr Woods gave evidence that in 1994, Singtel acquired Stonehenge Insurance Company Pty Ltd and subsequently changed the name of this entity to Optus Insurance Services. Optus Insurance Services has been providing insurance services since 1996. The financial services licence effective from 10 March 2004 shows that Optus Insurance Services is authorised to provide general financial product advice for, and to deal in, general insurance products. The insurance coverage is offered as part of the Optus Mobile subscription as a “bolt on” option. Customers are notified that the insurance is provided by Optus Insurance Services when they are provided with a product disclosure statement at the time of entering into their mobile subscription plan contract. Optus has continued to offer similar insurance products after the priority date. Singtel claimed that Mr Woods’ evidence established use of the OPTUS word mark in connection with services that are the same, or of the same kind, as the services in items (54), (55) and (62) in Optum’s trade mark application.

118    Optum accepted the use of the OPTUS mark as a trade mark in connection with the provision of insurance, but argued that the use is properly characterised as being use in relation to mobile device insurance. I agree with that characterisation. Whilst the evidence showed that Optus Insurance Services is licensed to provide general financial product advice for, and to deal in, general insurance products, the only insurance shown to be offered by the evidence related to mobile device insurance. There was no evidence to show that insurance was offered generally. I accordingly do not think that it is open to conclude that no distinction exists between the insurance services provided by Singtel and items (54), (55) and (62) in Optum’s trade mark application.

Accounting

119    Evidence was adduced from Peter Kirk, a state manager (Victoria/Tasmania) of Singtel. He gave evidence concerning a training service provided by Singtel for its franchisees and licensees with respect to “Pronto” System, being the point of sale and accounting system supplied to, and operated and supported by, Singtel for its franchisees and licensees. This system and the associated training have been in operation since 1997.

120    Optum submitted that there was no evidence of the trade mark under which the “Pronto” system training was provided and if there was trade mark use, that the use was properly characterised as being use in relation to training of telecommunications franchisees.

121    In my view, the evidence was insufficient to establish that the word “OPTUS” was used as a trade mark in connection with the “Pronto” system training. Mr Kirk’s evidence was that based on the work he did to familiarise himself with Singtel’s business when he joined the company in December 2012 he was “aware” that services that Singtel was providing to its franchisees, which included a range of educational, advertising, recruitment and training services, “had been provided by [Singtel] under the OPTUS brand for many years”. That evidence does not rise above mere assertion unsupported by any probative evidence showing use of the word mark “OPTUS” in connection with the “Pronto” system training. Moreover, there was insufficient evidence to enable a view to be formed about the nature of those services and whether they are the true equivalents of any of the designated services in Optum’s trade mark applications.

(3)    Conclusion

122    Singtel has not, by the evidence it adduced, discharged its burden of establishing that it made prior trade mark use of the OPTUS word mark in respect of any services that are the same as, or of the same kind, as services covered by the OPTUM trade mark applications identified in Schedule B.

Section 44: prior registrations

123    Section 44 relevantly provides:

(1)    …

(2)    Subject to subsections (3) and (4), an application for the registration of a trade mark ( applicant's trade mark ) in respect of services ( applicant's services ) must be rejected if:

(a)    it is substantially identical with, or deceptively similar to:

(i)      a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)      a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)      the priority date for the registration of the applicant's trade mark in respect of the applicant's services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

Note 1:       For deceptively similar see section 10.

Note 2:       For similar services see subsection 14(2).

….

(3)      If the Registrar in either case is satisfied:

(a)      …

(b)  that, because of other circumstances, it is proper to do so;

the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

…

124    Thus, for the s 44(2) ground of opposition to be made out, the Court must be satisfied of two matters. First, that the OPTUM marks are substantially identical with, or deceptively similar to, the registered OPTUS mark. Secondly, for each of the designated services in Optum’s trade mark applications, the Court must be satisfied that the service is similar to, or closely related to, the registered services. Optum contended that if the s 44(2) ground is made out, registration should be permitted under s 44(3).

Question 4: Whether either the OPTUM word mark or the OPTUM logo mark is substantially identical with OPTUS?

125    For the reasons given above, I have concluded that neither of the OPTUM marks are substantially identical with the word mark OPTUS.

Question 5: Whether either the OPTUM word mark or the OPTUM logo mark is deceptively similar to OPTUS?

126    Section 10 of the Act provides that a trade mark will only be deceptively similar to another trade mark if it “so nearly resembles that other trade mark that it is likely to deceive or cause confusion”. The question of the likelihood of deception or confusion is not determined by a side by side comparison of the marks but rather requires an assessment of the effect of the challenged mark on the minds of potential customers: RTM v Woolworths at [49]. The word “likely” also makes it necessary to show a real tangible danger of deception or confusion occurring. A mere possibility of deception or confusion is not sufficient: RTM v Woolworths at [50].

127    As the authorities recognise, what is involved is a comparison, on the one hand, of the impression based on recollection of the applicant’s mark that persons of ordinary intelligence and memory would have and, on the other hand, the impression that such persons would get from the respondent’s use of its mark. In making that comparison, the Court must make allowance for the imperfect recollection a person may have of the registered trade mark in determining whether another mark so nearly resembles the registered mark that it is likely to deceive or cause confusion: Shell Co of Australia v Esso Standard Oil (Aust) Ltd [1963] HCA 66; Cooper Engineering Co. Pty Ltd v Sigmund Pumps Ltd [1952] HCA 15, cited in RTM v Woolworths ); Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196 (“Crazy Ron’s”) at [84]; Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2015] FCAFC 156 (“Telstra Corporation v Phone Directories”). The test is not whether customers might think that the marks are the same, but rather whether there is a real risk that the respondent’s use of its trade mark will cause ordinary persons to wonder or to entertain a reasonable doubt as to whether its goods or services come from the same source as those of the applicant: RTM v Woolworths at [50]. In considering whether there is a likelihood of confusion or deception, all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services. Actual confusion is not required to be shown. Furthermore, the question of deceptive similarity is not limited to whether a particular use will give rise to deception or confusion but must be based upon the use that could properly be made of the trade mark in the future, if registration is obtained: RTM v Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362.

128    The rights of the parties are to be determined as at the date of the application.

129    Singtel argued that prospective purchasers would recall the “forceful similarities (to the point of identicality) between the marks” differing only with respect to the final letter and even if there was some inchoate recognition of a difference in the ending the consumer would not fix upon the different ending as a point of distinction. If anything, it was argued, the similarity in the style of the ending (–US and –UM) when combined with the dominance of the beginning (OPT–) would suggest to a prospective consumer, in his or her imperfect recollection, that the services that can be offered under the OPTUM marks come from, or are otherwise connected with, the same source. It was submitted that customers, even sophisticated ones, are accustomed to extensions of, and subtle variations to, brands and “the slight shift in final ending between S and M in a word that is otherwise identical and has no accepted signification” would cause consumers to wonder whether the services are part of an extension of Singtel’s services, albeit with focus on the healthcare sector. This was said to be reinforced by connotations of “optimal” or “optimum” that stem from the word Optum.

130    It was argued for Optum that in addition to the visual and aural differences, the following factors support a finding as to the absence of deceptive similarity.

131    It was submitted that given the nature of the designated services, potential acquirers of the designated services are likely to be sophisticated entities and because of this and the expense of such services, are likely to take a high level of care in deciding whether or not to acquire the designated services (referring by analogy to Anchorage at [45]); and are likely to see the trade marks under which they are offered throughout the course of their enquiries: Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864.

132    Secondly, it was submitted a search of the Register for marks pending or registered as at the later of the priority dates shows 281 trade marks which begin with “OPT” in classes 9, 16, 25, 26, 38, 41, 42, 44 and 45 (the classes in which the OPTUM marks are sought to be registered or in respect of which the registered OPTUS marks registrations are relied upon by Singtel). Reliance was placed on REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 where Bromberg J at [246] observed that courts had shown some reluctance to find deceptive similarity by reference to the impact of a common prefix or suffix.

133    Thirdly, it was argued that the OPTUS registered marks were “notoriously so ubiquitous and of such a long standing” with respect to telecommunications that consumers generally must be taken to be familiar with them. It was submitted that the fame of the registered OPTUS marks reduces the chances of a consumer’s imperfect recollection of them.

134    Fourthly, it was submitted that the marks convey different ideas which reduces the risk of confusion for the purposes of the deceptive similarity inquiry: Telstra Corporation v Phone Directories at [180]–[181].

135    Fifthly, it was argued account should be taken of differences between Singtel and Optum’s goods and services (citing RTM v Woolworths at [39]–[40]) and it was submitted the services in respect of which registration of the OPTUM marks is sought are quite different from the goods and services in respect of which the OPTUS marks are registered.

136    Sixthly, the Optum marks have been used in Australia since at least 2014 albeit in relation to a narrow subset of the services for which registration is sought but, despite this, there is no evidence of actual confusion with the registered OPTUS marks. Evidence to this effect was given by Paul Guerra, the senior vice-president of Asia Pacific Optum and Chad Peel, the senior vice-president of International Products and Solutions Optum. It was submitted that the absence of evidence of actual confusion told against Singtel where, as here, the trade marks have been in concurrent use in circumstances where confusion might well have occurred, if there was likely to be any: Conde Nast Publications Pty Ltd v Taylor at [509].

137    Seventhly, it was submitted that Singtel’s argument that customers, even sophisticated ones are accustomed to extensions of and subtle variations to brands such that consumers will wonder whether services provided under the OPTUM marks are part of an extension of Singtel’s services should be rejected. It was submitted that brand evolution and extension will not have any real role to play where the mark for which registration is sought does not possess the feature in which “brand equity” was built up in the registered mark: Qantas Airways Limited v Edwards [2016] FCA 729 at [176]. It was submitted that there was no reason to think that Singtel would offer services under the brand Optum.

138    I accept that the OPTUM word mark is not deceptively similar to the OPTUS word mark, though not for all the reasons advanced by Optum. As the authorities show, phonetic and visual similarities are both relevant in assessing whether the marks are deceptively similar (Berlei Hestia Industries Limited v The Bali Company Inc.) and in this case, in my view, the aural and visual differences are such that there would be no likelihood of confusion between the two marks. Whilst OPTUS and OPTUM are both single words with the same prefix, the words do not have a close phonetic resemblance and neither of the words lend themselves to mispronunciation. Moreover, whilst the words only differ in the last letters, both words are invented words with different connotations that do not create a deceptive resemblance of ideas. Thus, as a matter of impression and common sense, I do not think that a person of ordinary intelligence would be likely to be confused or deceived by the OPTUM mark, even allowing for an imperfect recollection.

139    I also accept Optum’s submission that the fame of the registered OPTUS marks reduces the chances of a consumer’s imperfect recollection of them. In accepting that argument, I need to address two matters.

140    The first one is a legal question as to whether, and the extent to which, reputation can be relevant in determining the question of deceptive similarity. On the authorities, the general principle is that a trade mark owner’s reputation in a particular mark is an irrelevant consideration in the assessment of deceptive similarity: see C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCAFC 1539 (“Henschke”) and Crazy Ron’s. However, as Singtel accepted, the fact that the mark, or an important element of it, is “notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services” will be a relevant consideration in assessing the nature of a consumer's imperfect recollection of a mark: RTM v Woolworths.

141    RTM v Woolworths was an appeal affirming a decision of a primary judge to set aside a decision of a delegate of the Registrar of Trade Marks. The delegate had rejected an application to register a mark comprising the words WOOLWORTHS METRO on the basis that the mark applied for was deceptively similar to the registered mark METRO. The primary judge had held that it was only possible to say that the aural use of the term “Woolworths metro” was deceptively similar to “metro” if the word “Woolworths” was ignored or discounted. French J held that it was appropriate for the primary judge not to discount the word “Woolworths” having regard to “its aural prominence and familiarity to Australians”, and the element of the mark “most likely to be noticed and remembered”, stating that:

His Honour's reference to the familiarity of the name ‘Woolworths’ in Australia was appropriate. Where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken, as is the present case, it would be artificial to separate out the physical features of the mark from the viewer’s perception of them. For in the end the question of resemblance is about how the mark is perceived. In the instant case the visual impact of the name ‘Woolworths’ cannot be assessed without a recognition of its notorious familiarity to consumers.

142    In both Henschke and Crazy Ron’s it was held that RTM v Woolworths is not authority for any wider proposition in relation to the relevance of reputation on a question of deceptive similarity, as any wider proposition would be inconsistent with established authority. In Henschke the Full Court said at [52]:

[RTM v]Woolworths was not an infringement case and, of course, the notoriety taken into account was not any notoriety attaching to marks already registered (or marks applications for which had been lodged before the Woolworths application); the notoriety attached to an element of the mark for registration of which Woolworths had applied. Nevertheless, in our view, Woolworths suggests a proposition for which the cases on which the appellants rely may be taken as authority. It is that, in assessing the nature of a consumer’s imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred.

See too Crazy Ron’s at [90].

143    The second one is factual. In the present case, the evidence of Ms Karakisidis on behalf of Singtel was that OPTUS was recognised by Brand-Finance Australia as the eighth most valuable Australian brand in 2011 (being the relevant time at which to assess deceptive similarity). Having regard to such evidence, the present case is, in my opinion, one where it can be said that the OPTUS mark and its use in connection with telecommunication services is “notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it”: RTM v Woolworths. Accordingly, the impact of the visual similarity of the marks in the assessment of the consumer’s imperfect recollection cannot, I think, be assessed without having regard to the familiarity of consumers with the OPTUS mark and its use with respect to telecommunications in 2011. In assessing a consumer’s imperfect recollection of the OPTUS mark, the fame of the registered OPTUS marks with respect to telecommunication services reduces the chances of a consumer’s imperfect recollection of them and I do not think that there is a real risk of confusion between the marks.

144    Consideration of Singtel’s reputation in the mark OPTUS lends further weight to the conclusion that the marks are not deceptively similar but, for the reasons already given, the conclusion that the marks are not deceptively similar does not depend or turn upon Singtel’s reputation in the mark OPTUS. Such a conclusion is reached just on the aural and visual differences and differences in connotations conveyed by the marks.

145    Accordingly, the s 44(2) ground also fails but in case I am wrong in my conclusion that the OPTUM marks are not deceptively similar to the OPTUS mark, I should consider the second limb of the s 44(2) ground, namely whether any of the services in Optum’s applications are similar to, or closely related to, the services or goods in Singtel’s registrations

Question 6: Whether any of the services in Optum’s applications are similar to or closely related to the services or goods in Singtel’s registrations?

146    Schedule C is a table identifying which of the services in Optum’s trade mark applications Singtel asserts are “similar services” to the OPTUS trade mark registrations (“the registered OPTUS services”) or “closely related” to goods in its trade mark registrations for the purposes of s 44(2) of the Act.

147    At trial, Singtel sought to add another category to the particulars previously given in support of this ground, namely class 16: directories. Optum objected to the addition of this further category and the Court reserved on the question of whether leave should be granted.

148    Under s 14(2) of the Act, goods and services are similar to other goods or services if they are the same as the other services or if they are of the same description as that of the other services.

149    Singtel argued that the Court is able to conclude from the language in the specifications of services that the relevant services in Optum’s trade mark applications are the “same as” the registered OPTUS services. It was submitted that the registered OPTUS services were generally broader than the Optum specification of the relevant service and it was clear as a matter of language that the Optum service was the “same as” the OPTUS service because the Optum specification was either identically described or fell within the broader language of the OPTUS service in its specification.

150    Optum argued that the services were not the same because the OPTUS registered services were general in nature whereas Optum’s designated services were specialised services. At most, it was argued, they could be services of the same description. It was further argued that in order to determine whether the services were of the same description, evidence was required in relation to the factors listed in Accor at [339] and, without that evidence, the Court could not conclude that the services were of the same description.

151    In Accor, the Full Court considered what was required to be shown in order to establish a claim of infringement under s 120(2)(c) of the Act. Section 120(2)(c) relevantly provides that:

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a)    …

(b)    …

(c)    services of the same description as that of services (registered services) in respect of which the trade mark is registered.

152    The Full Court stated at [337] that determining whether services are services of the same description as the registered service involves examining the essential character of each. At [339], the Full Court stated that the features to be considered in determining whether “particular impugned” services are of the same description as services for which a trade mark is registered are likely to include these considerations:

(1)    The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence…

(2)    To whom are the services offered?

(3)    How are they provided?

(4)    How are they used?

(5)    What is their purpose?

(6)    Are they bundled together with other services?

(7)    Are they differentiated by the functional level at which they are provided: wholesale or retail?

(8)    Where do they originate?

(9)    What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?

(10)    How closely contestable are the services in substance: are they in the same market or trade?

(11)    How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71]-[73].

153    Singtel did not argue that the principles articulated in Accor about the nature of the evidence required to show that services were of the same description for the purposes of s 120(2)(c) did not also apply in the context of the s 44(2) ground of opposition. Rather, it was argued that such evidence was not necessary in the present case because it was apparent from the descriptions in the specifications that the services were the same. It was further argued that if, and to the extent that, evidence was necessary to show that the relevant designated services in Optum’s trade mark applications were “of the same description” as the OPTUS registered services, then there was such evidence.

154    The parties also advanced arguments on the proper approach to the construction of the specifications of the relevant services. Optum argued that the specifications should be construed strictly, referring to Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816 as authority for that proposition. Singtel, in turn, argued that the Court should approach the construction of the specifications “in a common sense way”, not by applying a strict construction, referring to BP v Woolworths as authority in support of that contention. In that case Finkelstein J, in the context of considering whether an amendment to a trade mark application was made contrary to s 65 of the Act, stated that he “[did] not subscribe to the view that some strict construction should be applied” when deciding the type of trade mark that was the subject of the application, but would approach the construction of the application “in a common sense way”. Despite the “construction” issue being raised as an issue, there is no need to decide whether to adopt a strict construction of the specifications of services or to construe them in “a common sense way” as Singtel ultimately submitted that whether the specifications were construed strictly, or in a common sense way, made no difference on its argument.

155    I turn now to the comparison of services.

156    

157    Save with respect to Item (45), it can be concluded from the language used that the inherent character of the services is the same or at least of the same description, namely that of business consultancy and management consulting services. In respect of Optum’s services, the fact that those services are more prescriptive and specific than the OPTUS registered services does not gainsay the inherent character of such services as business consultancy and management consulting services.

158    However, “outsourcing” (see Item (45)), in the ordinary use of language, carries a different connotation to general business consultancy or management consulting services and it is not evident on the language alone that such services are the same or of the same description. Nor does the evidence assist to identify whether it can be said that such services are the same, or of the same description, as general business consultancy or management consulting services as the evidence did not illuminate the sense in which the word “outsourcing” is used in item (45). The fact that the description is “business consulting and outsourcing” (emphasis added) lends weight to the view that “outsourcing” is something different.

159    Accordingly, the ground is not made out in relation to Item (45).

160    

161    It can also be concluded from the language used that the inherent character of the services is the same, namely that of business consultancy services. The inherent character of Optum’s services is not gainsaid by the specification of the particular industry to which those services are directed.

162    

163    It cannot be concluded just from the language used that the inherent character of the services is the same or of the same description. Singtel argued however that “medical cost management” and “medical and health-care cost/price analysis” services are the same because such services are encompassed by the broadly described general business consultancy services and management consulting services.

164    It does not follow that the services are to be characterised as the same because of the scope of the broadly described OPTUS registered services. For example, in MID Sydney Pty Ltd v Australian Tourism Co Ltd [1998] FCA 1616 the Full Court held that services involved in conducting a “hotel business” had different characteristics from services described as “property management services” and, thus, were not services of the same description as property management services. The Full Court reasoned as follows:

Senior counsel for [the appellant] concentrated, in argument, on "property management services". His submission was that there was no evidence that the words had, for present purposes, any meaning other than their ordinary meaning, that is management services in respect of property generally. In particular, there was no limitation as to particular kinds of property for which property management services might be provided. Accordingly, so the submission in its broadest form went, if one found, in relation to any property, that a person provided services properly described as management services, that person should be taken as providing "property management services

Senior counsel relied also (as to the services in respect of which [the appellant’s] mark is registered) on evidence by Mr PC Garnett, a witness called by Touraust. Mr Garnett was a senior property manager of a firm of commercial real estate advisers whose responsibilities included the management of five office buildings. One of those buildings was at 5 Elizabeth Street, Sydney incorporating office space, an arcade called (coincidentally) Chifley Arcade and a restaurant. Mr Garnett described his services for the building owner as including supervising the collection of income relating to the building, payment of expenditure relating to the building, the engaging of cleaning contractors, making arrangements for repairs, refurbishments and maintenance and dealing with leasing matters, including renewals, assignments, rent reviews and, in relation to vacant space, locating lessees for small areas and contracting out the leasing of larger areas.

It could hardly be said that there is anything surprising about Mr Garnett's evidence. The activities which he described are, we think, the principal activities which fall within the ordinary understanding of "property management services". The next step in the argument took a broad form and a narrower form. In its broad form, it was to the effect that an hotel is property; one who manages an hotel for its owner or lessee is managing property and thus providing property management services. In its narrower form, on which senior counsel concentrated, it was to the effect that a number of the particular services which the manager of an hotel will perform, and which on the evidence would be provided by Touraust, are services of the same general character as those described by Mr Garnett and that, whatever might be the case with property of other kinds, hotel management was predominantly property management. ..

In our view, neither the broad nor the narrower submission should be accepted. The answer to the broad submission is, we think, simply that one who conducts or manages a business on property of another is not for that reason alone to be regarded, within the ordinary meaning of the words, as providing property management services. It makes no difference that the property is designed or adapted specifically for the purpose of the particular business or that the conduct of the business includes, as incidental to it, the doing of a number of things of a kind which might be done by a property manager in relation to property under its management. The conduct of an hotel business includes the accommodation of guests, the operation of restaurants and bars (including compliance with the liquor licensing law) and the provision of conference and business facilities and of other services normally offered by hoteliers. These activities cannot ordinarily be described as "property management services". To elaborate on what might be thought an obvious proposition about the ordinary use of language is often not profitable. But the ordinary meaning of property management services - and this is supported by Mr Garnett's evidence about his own business activities - would not encompass the occupation of a property under contract with, or licence or lease from, its owner or lessee in order to manage a business, for the benefit of both the manager and the owner or lessee, conducted on that property.

As noted in Accor, the Full Court in MID reached these conclusions by construing the words “property management services” and taking into account the evidence given by the services providers as to the features of the various services.

165    In the present case, it is not evident as a matter of language that “medical cost management” and “medical and health-care cost/price analysis” services would ordinarily be described as “general business consultancy” and “management consultancy” services. Nor can it be said, in my view, that “medical cost management” and “medical and health-care cost/price analysis” services have the same inherent character as “general business consultancy” and “management consultancy” services just because such services might be encompassed within the broad specifications of the OPTUS services. Furthermore, the evidence does not enable that conclusion to be drawn. Accordingly, the ground is not made out in relation to Items (6) and (11).

166    

167    Likewise, it is not evident as a matter of language that the service listed as “organizing and administering networks of healthcare providers” would ordinarily be described as “general business consultancy” and “management consultancy” services and such services are not to be regarded as having the same inherent character for the reason alone that such services might be encompassed within the broad specifications of the OPTUS services. Furthermore, it is not able to be concluded on the evidence that such services are the same or of the same description as “business consultancy” or “management consultancy” services. Accordingly, the ground is not made out in relation to Item (7).

168    

169    Optum argued that Singtel should not be permitted to rely on Directories because it was raised for the first time during the course of trial in circumstances where the delay was not explained and Optum lost the opportunity to consider whether it would have adduced any evidence in response. However, the nature of the evidence that may have been led was not identified and I am not persuaded that Optum has suffered any real prejudice as the result of the late reliance. Accordingly, leave is granted to Singtel to rely on this category.

170    As “directories” are a good, the question here is whether they are “closely related goods”. The phrase “closely related to” is not defined for the purposes of the Act but has been held to be of wider import than “similar”: RTM v Woolworths. In RTM v Woolworths French J (with whom Tamberlin J agreed) said at [37] that the term “closely related” recognised that goods and services are different things and there must be some other form of relationship between the services covered by one mark and the goods covered by another to enable the goods or services in question to be described as “closely related”. His Honour stated that “[t]he relationships may, and perhaps in most cases will, be defined by the function of the service with respect to the goods”. In Caterpillar Loader Hire (Holdings) Pty Ltd v Caterpillar Tractor Co [1983] FCA 143 Lockhart J gave as examples of where the goods and services are closely related:

… the sale of goods such as data processing equipment and the sale of programs for their operation; the sale of curtains and furnishing materials on the one hand, and the sewing of curtains on the other, as interior decorators often sell curtains and perform the service of sewing; the sale of clothes on the one hand and tailoring on the other because the service of custom tailoring is frequently provided in addition to the sale of ready-made clothes; and the sale of educational material on the one hand and educational services (language courses, home study programs) on the other.

In contrast, in Qantas Airways Limited v Edwards [2016] FCA 729 it was held that the appellant’s services were not “closely related services” to the respondent’s goods in circumstances where the appellant’s registered services were “advertising, marketing and merchandising services” and the respondent’s services in respect of which registration was sought were “clothing; footwear; headwear; shirts; and T-shirts”.

171    I accept that directory information services are closely related to “Directories”. Although Item (42) does not use the language of directory information services, the type of information to be provided in the online computer database services is akin to directory services and also closely related to “Directories”.

172    

173    The Optum services involve a combination of promotion and administrative services and it is not evident as a function of language that these services are the same thing as advertising and marketing services or of the same description. The mere fact that services have an incidental feature in common is not sufficient to render them “similar”, within the defined meaning of that term, because incidental services are to be treated as taking their character from the whole: Accor. Accordingly, the ground is not made out in relation to Items (9), (12), (16) and (17).

174    

It is not evident as a function of language that the services listed as “healthcare and medical business services, namely, development of systems for healthcare delivery between business the service” would ordinarily be described as “business consultancy” or “management consulting” services and such services are not to be regarded as having the same inherent character for the reason alone that such services might be encompassed within the broad specifications of the OPTUS services. Nor does the evidence enable the conclusion to be drawn such services are the same or of the same description. Accordingly, the ground is not made out in relation to Item (22).

175    

176    It is also not evident as a function of language that the Optum services listed Items (24), (26) and (33) would ordinarily be described as “business consultancy” or “management consulting” services and such services are not be regarded as having the same inherent character for the reason alone that such services might be encompassed within the broad specifications of the OPTUS services. Nor does the evidence enable the conclusion to be drawn that these services are the same or of the same description. Accordingly, the ground is not made out in relation to Items (24), (26) and (33).

177    

178    The same analysis applies to this category. It is not evident as a function of language that the service in item (37) would ordinarily be described as business consultancy or management consulting services and such services are not to be regarded as having the same inherent character for the reason alone that such services might be encompassed within the broad specifications of the OPTUS services. Nor does the evidence enable the conclusion to be drawn that these services are the same or of the same description. Accordingly, the ground is not made out in relation to Item (37).

179    

180    As a function of language, the service listed as “outsourcing services in the field of healthcare” is not the same as business consultancy or management consulting services and nor are they of the same description. Further, if and to the extent that “outsourcing services” may have some features in common with business consultancy or management consulting services is not sufficient to render them “similar”, within the defined meaning of that term, because incidental services are to be treated as taking their character from the whole: Accor. Nor does the evidence enable the conclusion to be drawn that these services are the same or of the same description. Accordingly, the ground is not made out in relation to Item (39).

181    

182    It is not evident as a function of language that the services in Items (44) and (46) would ordinarily be described as management consulting services nor are they of the same description. Nor does the evidence enable the conclusion to be drawn that these services are the same or are of the same description. Accordingly, the ground is not made out in relation to Items (44) and (46).

183    

184    It is not evident as a function of language that the services listed in items (36), (47), (49) and (50) would ordinarily be described as business consultancy or management consulting services nor, as a matter of language, are they of the same description. Nor does the evidence enable the conclusion to be drawn that these services are the same or of the same description. Accordingly, the ground is not made out in relation to items (36), (47), (49) and (50).

185    

186    It is not evident as a function of language that the service in Item (110) would ordinarily be described as a business consultancy or management consulting service nor, as a matter of language, is it of the same description. Nor does the evidence enable the conclusion to be drawn that these services are the same or of the same description. Accordingly, the ground is not made out in relation to Item (110).

187    

188    As a function of language the service listed in Item (143) is not the same or of the same description as the OPTUS registered services. Further, if and to the extent that these computer services may be said to have some features in common with the OPTUS registered services is not sufficient to render them “similar”, within the defined meaning of that term, because incidental services are to be treated as taking their character from the whole: Accor. Nor does the evidence enable the conclusion to be drawn that these services are the same or of the same description. Accordingly, the ground is not made out in relation to Item (143).

Conclusion

189    If I am wrong in concluding that the Optum mark is not deceptively similar to the OPTUS word mark, I consider that Singtel would otherwise have discharged its onus on the s 44(2) ground in relation to Optum’s designated services (3), (14), (15), (25), (38), (8), (41) and (42).

Question 7: Whether there are other circumstances because of which it is proper to permit registration of either the Optum word mark or the Optum logo mark?

190    Optum submitted that even if one or both of the Optum marks falls foul of s 44(2) in respect of any or all of the designated services their registration should be permitted under s 44(3)(b). Section 44(3)(b) permits registration where “because of other circumstances, it is proper to do so”. It has been held that only circumstances that were prevailing at the priority date are relevant under s 44(3)(b): Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 at [295]–[298] per Dodds-Streeton J; on appeal Vivo International Corporation Pty Ltd v Tivo Inc [2012] FCAFC 159; Hills Industries Ltd v Bitek Pty Ltd (2011) 214 FCR 396 (“Hills Industries”) at [177]–[178] per Lander J.

191    If it was necessary to decide, I would be satisfied that there are other circumstances which make it proper to accept Optum’s application for registration in respect of Optum’s designated services (3), (14), (15), (25), (38), (8), (41) and (42).

192    First, the Optum marks use the company’s name and all of Optum’s business activities in Australia are under the Optum name and trade mark.

193    Secondly, whilst Optum had not started to use the OPTUM marks in Australia in 2011, the evidence showed that OPTUM was first registered as a trade mark in the United States in 1993 and by 2011 the Optum brand name had been used extensively overseas in relation to services in the healthcare industry: VB Distributors v Matsushita Electrical Industrial Co Ltd (1999) 53 IPR 466 (HCNZ) at [94]. It may reasonably be concluded that it would cause substantial prejudice to Optum if it was unable to use its marks in Australia.

194    Thirdly, given that Optum had not started to use the OPTUM marks in Australia in 2011 and only commenced in 2014, if only the circumstances as at 2011 were considered, it could not be said one way or the other that the co-existence of the marks would cause actual confusion or prejudice to Singtel. Such a consideration weighs in favour of Optum in the present case in view of its previous and well-known use of the Optum brand name. In this regard, whilst it has been held that post priority date matters are not relevant, nonetheless I am fortified in my view that it would be appropriate to exercise the power under s 44(3) in Optum’s favour by the fact that in the present case, there is no evidence that the co-existence of the marks has caused actual confusion or caused Singtel any prejudice or harm since Optum started using the OPTUM marks in Australia.

195    In view of my conclusion it is unnecessary to address Optum’s further argument based upon its cross-claim for removal of the OPTUS mark in respect of some of the goods and services set out in the specifications of the registrations pursuant to s 92(4)(b) of the Act for non-use.

Section 60: Reputation

196    Section 60 provides that:

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)    another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)    because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

197    There are two limbs to be considered under s 60, namely:

(1)    under s 60(a): whether there was a reputation and a relevant trade mark before the priority dates and, if so, the extent of that reputation and the goods or services to which it applied; and

(2)    under s 60(b): whether, because of that reputation, consumers would be likely to be confused or deceived by the use of the OPTUM marks.

Question 8: What was the extent of Singtel’s reputation in relation to OPTUS before 2011?

198    Optum accepted that the OPTUS word mark had a reputation in Australia in respect of telecommunication services as at the priority dates but contended that the reputation in the OPTUS word mark (and any other OPTUS trade mark) did not extend beyond telecommunication services. In particular, Optum disputed that the OPTUS word mark (and any other OPTUS trade mark) had a reputation in respect of “insurance, consulting advertising services and services within the healthcare sector” or in respect of any of the designated services.

199    Singtel contended that its reputation was not confined to telecommunications goods and services. Singtel relied on evidence from Ms Karakisidis who gave evidence of the use of the OPTUS mark in relation to the following areas:

(a)    community projects and services, especially through the Kids Help Line which Optus sponsored and its association with the Starlight Foundation;

(b)    ventures and sponsorships with governments and charities in the field of education and personal development;

(c)    sponsorships of entertainment and sporting events, including the Davis Cup, Cirque de Soleil, football, the Chanteuses, P!nk and Rihanna, and the Australian Open tennis;

(d)    loyalty programs; and

(e)    publications and advertising material through its then monthly magazine, which included third party advertisements from suppliers of devices and equipment such as Dell, BlackBerry and Motorola.

200    Singtel also relied on the evidence from Mr Woods in relation to the insurance services (including the processing of claims) and the evidence of Mr Hudson and Mr Donker in respect of the consulting services in respect of the healthcare sector, noting also the “enterprise level clients” to whom Mr Donker presented and the significant value of the services offered.

201    I accept Optum’s submission that the evidence did not establish that the OPTUS word mark at the priority date had a reputation beyond associating the mark with telecommunications. More particularly, the evidence did not establish a reputation that extended to the designated services in respect of which registration of the OPTUM marks is sought by Optum.

202    Reputation involves the recognition of the trade mark by the public generally (McCormick & Co Inc v McCormick [2000] FCA 1335 at [81]) and in this regard, Ms Karakisidis’ evidence showed that OPTUS is a well-known brand in Australia but her evidence did not show a public awareness and appreciation of the OPTUS mark in connection with goods or services other than for telecommunications. Mr Woods’ evidence about the use of the OPTUS mark with respect to the insurance services offered by Singtel only showed insurance relating to mobile phone devices. Both Mr Donker’s evidence and Mr Hudson’s evidence did show the ‘Yes’ OPTUS mark (which I have already accepted constituted use of the OPTUS trade mark) was used in relation to promoting the services that Singtel was offering or intended to offer in the healthcare industry. However, that evidence fell far short of establishing that the public also associated the OPTUS mark with a different industry to telecommunications as distinct from such services forming part of, or incidental to, telecommunications. Furthermore, the evidence about Singtel’s activities in the healthcare industry was too general and lacking in specifics from which to infer that the OPTUS word mark had a reputation in Australia in relation to goods and services beyond telecommunications.

203    Although the language of s 60 does not, in express terms, require that it be shown that the reputation applies to the goods and services the subject of the trade mark application, s 60(b) is unlikely to be satisfied unless such a reputation is established because the use of the mark in respect of such goods or services is not likely to deceive or cause confusion. In Hills Industries Lander J considered the ground of opposition under s 60 as it appeared prior to the 2006 amendments. His Honour had found that there was no reputation in Hills’ mark prior to the priority date but, in any event, went on to consider whether the use of the trade mark sought to be registered would be likely to deceive or cause confusion. His Honour observed at [208] that:

Assuming, contrary to my opinion, that the Hills’ mark had acquired a reputation, it had only acquired, at the priority date, a reputation in respect of set-top boxes. Hills did not contend for any other reputation. If that was the case, the use of the Bitek mark in respect of its goods was not likely to deceive or cause confusion because the goods were unrelated to a set-top box. Bitek’s goods specifically excluded set-top boxes. A consumer wishing to acquire a TV installation accessory or external antenna bearing the Bitek brand would not in my opinion be likely to be confused or deceived as to the origin or provenance of those products because of Hills’ mark’s reputation in set-top boxes. For that further reason, Hills could not rely upon s 60 to defeat Bitek’s application for registration.

See also GAIN Capital UK Limited v Citigroup Inc (No 4) [2017] FCA 519 at [148], [169].

204    The Court was asked to draw an adverse inference from the failure of Singtel to adduce evidence of revenue earned or promotional expenditure in relation to goods and services beyond those of the field of telecommunications: see Jones v Dunkel (1959) 101 CLR 298; Commercial Union v Ferrcon (1991) 22 NSWLR 389 at [418]; cf ASIC v Hellicar (2012) 247 CLR 345 at [165]–[170]. If open, it is unnecessary to draw such an inference because the evidence as it stands did not establish that the OPTUS trade mark had acquired a reputation as at the priority dates beyond telecommunications, and more particularly with respect to the designated services.

Question 9: Because of their reputation, is the use of either the Optum word mark or the Optum logo mark likely to deceive or cause confusion?

205    If I am wrong and the reputation of the OPTUS marks has extended to the healthcare field there would still be no likelihood of confusion because of the differences between the OPTUM marks and the OPTUS word mark and the nature of the reputation in the OPTUS word mark. The notion of “consumer” for the purposes of s 60 is someone who is assumed to have that level of awareness of a mark, as it is consistent with the content and extent of the reputation of the mark relied upon: Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065. Optum submitted that a strong reputation is likely to militate against any likelihood of confusion where there are differences between the marks under comparison: see Delfi at [28]–[29]. It was submitted that the reputation in the OPTUS mark cannot be divorced from its spelling and pronunciation. I agree. I have found already that the marks are not substantially identical or deceptively similar. The differences in the marks and the strong reputation attaching to the OPTUS mark in relation to telecommunications makes it unlikely that consumers would be likely to be confused or deceived by the use of the OPTUM marks.

206    The answer to this question is “no”.

Non-use

207    Optum has cross-claimed for orders that Singtel’s OPTUS mark be removed from the register pursuant to s 92(4)(b) of the Act for non-use in respect of some of the goods and services set out in the specifications of the registrations. The goods and services the subject of the non-use application in class 35 are:

(1)    general business consultancy services;

(2)    management consulting services;

(3)    advertising services;

(4)    public relations services; and

(5)    marketing services.

The cross-claim had also identified software in class 9 but at the hearing Optum accepted that the registered OPTUS marks were used in respect of class 9 software during the non-use period.

208    Section 92(4)(b) of the Act provides as a ground for removal that:

.. that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)     used the trade mark in Australia; or

(ii)      used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

209    By s 100(1)(c) of the Act the opponent must rebut an allegation made under s 92(4)(b) – that is to say, in the present case, Singtel has the onus of rebutting the allegation of non-use.

Question 10: Whether, in the period April 2013 to April 2016, Singtel used OPTUS in respect of each of the impugned goods and services?

210    Under s 100(1)(b) of the Act, Singtel will have rebutted the allegation made under s 92(4)(b) if it establishes that the registered OPTUS marks were used in good faith in relation to the relevant goods and services during the non-use period (being 30 April 2013 to 30 April 2016). For the purposes of s 92(4)(b), a mark is only used as a trade mark if it is used to indicate a connection in the course of trade between the registered owner and the goods or services in relation to which it is used: E&J Gallo at [41]–[42]. If use is established in relation only to part of a particular category of goods or services, the scope of that category may be narrowed by the Court redrafting a registration to ensure that it accords with the scope of established use: Hills v Bitek at [296]–[306]. Singtel submitted that the evidence established that there had been relevant use within the non-use period in respect of each of the relevant goods and services.

“General Business Consultancy Services” and “Management Consulting Services”

211    First, Singtel relied on the evidence of Mr Tam who gave evidence about Optus Think Space. Mr Tam was its founder and facilitator. He gave evidence that Optus Think Space is a business consultancy workshop launched by Optus in 2014. Its purpose is to engage with Singtel’s existing and prospective business customers to assist them to plan their business and solve (or help solve) their business issues and problems, including in relation to business strategy development, stakeholder alignment and organisation change. Mr Tam stated that Optus Think Space does this by designing and facilitating workshops for its business customers. These workshops are conducted in a specially furbished facility on Singtel’s main campus in Macquarie Park. Mr Tam gave an example of a business consultancy workshop provided by Singtel to Uniting in 2015 and exhibited a brochure published in April 2016 outlining the services that Singtel provided to Uniting. Mr Tam also exhibited a brochure dated May 2016 showing photographs of the Optus Think Space premises. He gave evidence that approximately 200 Optus Think Space workshops were provided up to April 2016 and Singtel continues to conduct them and exhibits examples of advertising and promotional materials in relation to the Optus Think Space.

212    Optum argued that there was no evidence that the OPTUS word mark was used in these activities and if a trade mark was used, the mark was “Optus think space”, “OPTUS BUSINESS THINKSPACE” or “OPTUS ‘yes’”. As I have held already that “OPTUS ‘yes’” constitutes a use of the OPTUS word mark, I reject the argument that trade mark use during the non-use period was not shown.

213    Optum also argued that if there was trade mark use it was in respect of business consultancy workshops which was a narrow subset of “general business consultancy services” and does not form part of “management consultancy services”. I agree that the relevant services are not apt to be described as management consultancy services.

214    I accordingly accept on the basis of the evidence that there has been use of the OPTUS mark in respect of business consultancy services in class 35.

215    Singtel also relied upon the evidence of Mr Kirk about the Optus franchise network and in particular his evidence about educational services (especially the induction program, business planning training, and leadership development program), recruitment services and support services. These were services that Singtel provided to its franchisees in the relevant period (and continues to provide) to support the franchisees in their commercial endeavours. It was submitted that in this way, the services offered by Singtel as part of its franchise network are a form of (internal) business consultancy and management service. It was submitted that it did not matter that the people to whom the services were offered are part of Singtel’s franchise network. What mattered was whether Singtel had used its OPTUS trade mark in the relevant period in relation to the consultancy services and it was submitted Mr Kirk’s evidence supported the conclusion that it had.

216    Optum argued that there was no evidence that any services were provided under the registered OPTUS mark but if they were, the services are properly characterised as telecommunications franchisee support services (or, even on a broader view, franchisee support services) and do not constitute general business consultancy or management consultancy services.

217    There was in evidence a document promoting franchise opportunities using the ‘yes’ OPTUS mark, and I accept that document as evidence of use of the OPTUS word mark in relation to the services offered to its franchisees. However, I accept Optum’s characterisation of the services and do not accept that Singtel by this evidence has established use of OPTUS word mark in general business consultancy or management consultancy services.

“Advertising”, Publications” and “Marketing Services”

218    With respect to advertising, public relations and marketing services, Singtel relied upon the evidence of Mr Bailey and Mr Williams. Mr Bailey gave evidence about the Optus YesXtra app which is a mobile application available to certain Optus customers who use a mobile phone that runs on an Android operating system. According to Mr Bailey, once the app is downloaded by an Optus customer who “opts in” to the arrangement, access is granted to brands to advertise on the locked screen of the participating Optus customer’s mobile phone in exchange for free mobile data which is provided by Singtel at the end of every month. As a product offering to customers, the Optus YesXtra app involves three companies: Singtel which provides the customers who receive the advertisements on their locked screens with the free data; Postr Media Limited which provides the technology that enables the advertisements to appear on the customers’ locked screen and also manages the sale of advertising inventory where no direct sell has been achieved; and Amobee ANZ Pty Ltd which manages the sale of direct advertisements and forwards these to the Postr ad server to be placed on participating customers’ locked screens. The app was launched in trial form on 17 December 2015. Mr Williams gave evidence that since October 2015 Amobee has acted as a reseller of the Optus YesXtra app. Amobee presents and offers the app to advertising agencies which are responsible for media planning and for buying third party brands. The Amobee PowerPoint Sales Deck which is used by Amobee employees when presenting the app to advertising agencies was also in evidence. Mr Williams explained that campaign reports are provided to participating advertising brands. It was submitted that Singtel is at the centre of this arrangement. Not only does Singtel provide the platform, the customers and the data, it engaged both Amobee and Postr to sell advertising space for use on the app and the display of advertisements on customers’ phones. The brands which participated receive reports as to how their campaign worked. Singtel submitted that this established use of the OPTUS mark in the relevant period in relation to advertising, public relations and marketing services.

219    Optum argued that:

(a)    the trade mark used is ‘yes XTRA” in respect of mobile phone apps;

(b)    the service provided by Singtel is the provision of data which does not constitute advertising, public relations or marketing services;

(c)    as it is Postr Media which provides the app to customers, it follows that any trade mark use in relation to the app is use by Postr, not Singtel, and hence is not use as required by s 92(4)(b) of the Act (ie use by the “registered owner”);

(d)    as Amobee, not Singtel, is responsible for the sale of direct advertisements it follows that any trade mark use in relation to the app is use by Amobee, not Singtel and hence is not use as required by s 92(4)(b) of the Act (ie use by the “registered owner”).

220    I agree with these submissions for the reasons put forward by Optum, which I adopt.

221    Singtel also relied on Mr Kirk’s evidence with respect to the advertising services that Singtel provided to its franchisees and licensees by engaging its specific campaign advertising targeted at a specific geographical area or a specific store in which the advertising was conducted by Singtel on behalf of the franchisee or licensee, providing franchisees or licensees with access to a marketing portal and placing advertising in media on a franchisee’s behalf. Whilst I accept that Singtel provided advertising services to its franchisees there was no evidence of the use of the OPTUS word mark in connection with such services, apart from Mr Kirk’s assertion that he was “aware” that services that Singtel was providing to its franchisees, “had been provided by [Singtel] under the OPTUS brand for many years”. That assertion was unsupported by probative evidence and is insufficient to prove use of the OPTUS word mark in connection with advertising services. Having regard to Mr Kirk’s evidence about the nature of those services, I also agree with Optum that such services are properly characterised as the performance of franchise support services, not advertising as such. This is made clear by Mr Kirk’s evidence as follows:

Upon joining Optus in 2012, I became aware that Optus engaged in specific campaign advertising in addition to running general brand advertising. Specific campaign advertising is advertising targeted at a specific geographical area or a specific store. Based on the work I did to familiarise myself with the business, it is my understanding that Optus had engaged in specific campaign advertising for many years before 2012. This advertising was conducted by Optus on behalf of specific franchisees/licensees. This specific advertising is and was generally either wholly funded by Optus, or funded cooperatively with the relevant franchisee(s).

As part of enabling franchisees/licensees to engage in specific advertising, Optus provides Optus franchisees/licensees with access to a marketing portal. This portal was in use when I joined Optus. The marketing portal is an online portal which allows franchisees/licensees to access templates for a variety of advertising material, including but not limited to television commercials, in-store advertising material and radio scripts. The templates contained on this marketing portal can be modified by the Optus franchisees/licensees and sent to Optus for approval before being published. Optus works with the franchisees and licensees to ensure the advertising material is rolled out appropriately.

I am also aware of circumstances where Optus has placed advertising in media on a franchisee's behalf. This has usually occurred where a particular Optus franchisee has needed more assistance in relation to the roll out of advertising material. This has occurred in the time I have been at Optus. Based on the work I did to familiarise myself with the business, I am also aware that this occurred before 2012.

222    Finally, Singtel relied on an Optus Mobile Advertising Standard Agreement with AIRG Inc (“the AIRG Agreement”) as evidence of use in relation to advertising and marketing services during the non-use period. The AIRG Agreement commenced on 22 March 2010 and terminated on 5 March 2015. The AIRG Agreement facilitated the provision by Singtel to AIRG of mobile advertising space on the Optus mobile portal which provided Optus mobile customers with a home page to access content and services. Under the AIRG agreement, AIRG purchased and placed advertising material on Singtel’s portal and was required to comply with Singtel’s mobile advertising guidelines. It was submitted that this agreement also established the use of the OPTUS mark in the relevant period in relation to advertising and marketing services. However, the agreement does not contain the registered OPTUS mark and there was no evidence of the OPTUS mark being used in providing any services under the agreement.

Conclusion

223    In summary therefore, I find that Singtel has only rebutted the allegation made under s 92(4)(b) with respect to business consultancy services. In so far as Singtel has established use, Optum in its cross-claim has sought an order that the non-use services be removed or redrafted so that they no longer encompass services otherwise than for, or in connection with, telecommunications or communications. The parties both agreed that the Court, before making any orders, should first seek further submissions from the parties.

Question 11: Should the Court should exercise its discretion not to order the removal of Singtel’s trade marks in respect of any of those services?

224    This question arises if the Court is not satisfied that there has been use of the OPTUS mark in respect of all of the relevant services. As no final conclusion is reached on the non-use claim, it is unnecessary to answer question 11.

Question 12: If the Court finds that removal of the trade marks should be ordered in respect of any of those goods or services, does it follow that the trade marks are not (to that extent) available as prior registrations for the purposes of s 44 of the Act?

225    It is also unnecessary to answer question 12.

Conclusion

226    Singtel has not succeeded on its claim that the OPTUM mark is substantially identical to, or deceptively similar with, the OPTUS word mark and accordingly the grounds of opposition under ss 58 and 44 have not been established. Singtel has also not succeeded on its s 60 ground of opposition. Accordingly, the appeal must be dismissed.

227    The parties are directed to provide minutes of proposed orders within seven days giving effect to the reasons for decision.

Associate:

Dated:    1 May 2018

SCHEDULE B

Appellant’s Identification of Services for s 58 Ground

SCHEDULE C

Appellant’s Identification of Services for s 44 Ground