Opposition by Uber Constructions Pty Ltd to registration of trade mark applications 1796840 (37) – Uber Builders and Developers – and 1797491(37) – UBER CONSTRUCTIONS AUSTRALIA Logo, in the name of Uber Builders...

[2019] ATMO 111

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re Opposition by Uber Constructions Pty Ltd to registration of trade mark applications 1796840 (37) – Uber Builders and Developers – and 1797491(37) – UBER CONSTRUCTIONS AUSTRALIA Logo, in the

name of Uber Builders and Developers Pty Ltd

DELEGATE:                   Debrett Lyons

REPRESENTATION:        Opponent: Ike Papageorge of Herbert Smith Freehills

Applicant: John Gottschall of Counsel, instructed by NWA Legal Services

DECISION:                   2019 ATMO 111

Trade Marks Act 1995 (Cth) - Section 52 oppositions: s 44 considered – ground established – trade marks refused.

Background

1. This decision concerns oppositions brought by Uber Constructions Pty Ltd (‘the Opponent’) pursuant to s 52 of the Trade Marks Act 1995 (Cth) (‘the Act’) to registration of the trade marks the subject of the applications detailed below in the name of Uber Builders and Developers Pty Ltd (‘the Applicant’):

Application Number:  1796840

Filing (and Priority) Date:  23 September 2016 Acceptance Date:   3 January 2017

Services:  Class 37: Advisory services relating to building; Advisory services relating to building construction materials; Advisory services relating to building refurbishment; Advisory services relating to property development building and construction services; Advisory services relating to the alteration of buildings; Advisory services relating to the construction of buildings; Advisory services relating to the maintenance of buildings; Advisory services relating to the repair of buildings; Application of coatings to buildings; Building (construction) supervision; Building and construction of real estate subdivisions and developments; Building and construction services; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Building consultancy services; Building demolition; Building insulating; Building maintenance; Building of apartment buildings; Building of commercial properties;

Building of houses; Building of industrial properties; Building of offices; Building  project management; Building project management (building construction supervision);  Building refurbishment services; Building repair; Building repairs; Building services; Construction of buildings; Damp-proofing (building); Demolition of buildings; Development of property (building and construction services); Dismantling of buildings; Erection of pre-fabricated buildings; House building; Housing development (building and construction services); Installation of fittings for buildings; Interior refurbishment of buildings; Maintenance and repair of building contents; Maintenance and repair of buildings; Maintenance and repair of utilities in buildings; On site building project management; Painting and decorating of buildings; Painting of buildings; Preservation of buildings; Project preparation relating to building renovation; Proofing of buildings against pest and vermin access; Property development (building and construction services); Providing information, including online, about building construction, and repair and installation services; Provision of information in relation to building construction; Real estate development (building and construction services); Redevelopment of buildings; Refurbishment of buildings; Renovation of buildings; Repair of buildings; Restoration of buildings; Supervision of building construction; Supervision of building repair; Supervision of building work; Wrecking of buildings (demolition).

Trade Mark:  Uber Builders and Developers (‘the Word Mark’) Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5)

applied.

Application Number:  1797491

Filing (and Priority) Date:  23 September 2016 Acceptance Date:   3 January 2017

Services:  Class 37: Building and construction of real estate subdivisions and developments; Building and construction services; Building construction; Building construction advisory services; Property development (building and construction services)

Trade Mark:    (‘the Logo Mark’)

Endorsement: Provisions of subsection s44(4) and/or Reg 4.15A(5)

applied.

1. In this decision I will refer to the class 37 services of both applications together as ‘the Applicant’s Services’.

1. The applications were examined as required under the Act and, subject to the recorded endorsement referred to above, were accepted for possible registration and advertised as such in the Australian Official Journal of Trade Marks. In this case nothing turns on this date or the dates when the Opponent filed Notices of Intention to Oppose the registrations, filed its Statement of Grounds and Particulars (‘the SGPs’), or when the Applicant filed Notices of Intention to Defend the applications.

1. What is pertinent to the following discussion is the fact that the Opponent is the owner of the trade marks detailed below (‘the Opponent’s Trade Marks’). The class 37 specification is the same in both cases (‘the Opponent’s Services’) and is set out in full in the Annexure to this decision. Those services shown below form part of the  full specification.

Trade Mark Number	Trade Mark	Priority Date	Class	Services include	Status
1734718	UBER CONSTRUCTIONS	13 November 2015	37	Advisory services relating to building construction materials; Advisory services relating to construction; Building and construction services; Building construction; Building construction advisory services	Registered
1780133	UBER	29 June 2016	37	As above	Pending

1. The parties filed evidence, described below, after which they requested an oral hearing. I heard the matter on 5 March 2019 as a delegate of the Registrar of Trade Marks. Ike Papageorge of Herbert Smith Freehills appeared for the Opponent. John Gottscall of Counsel, instructed by NWA Legal Services, appeared for the Applicant. Both representatives’ oral submissions were supplemented by written summaries filed prior to the hearing.

Evidence

1. The Opponent filed Evidence in Support of its opposition which consists of the Declaration made on 12 April 2017 by Darren Walsh (‘the Walsh  Declaration’). The Applicant filed Evidence in Answer which consists of the Declaration made  on 26 July 2017 by Nicholas William Albon and the Declaration made on 3 August 2017 by David Rogalsky (‘the Rogalski Declaration’).

Grounds of Opposition, Onus and Standard of Proof

1. The SGPs nominated grounds of opposition under ss 42(b), 44, 58, 58A, 60 and 62A of the Act. The onus of proof in an opposition under s 52 of the Act rests upon the Opponent1 and the relevant standard of proof is the ordinary civil standard based on the balance of probabilities.2 The time at which a ground of opposition must be established is the filing date3, or for the purposes of ss 44 and 60, the “priority date”, of the applications. For the reasons which follow, I am able to decide these oppositions under s 44 and the priority date in each case is 23 September 2016, coinciding with the actual filing date.

Consideration

Section 44

1. Section 44 of the Act is concerned with substantially identical or deceptively similar trade marks and, so far as relevant to the facts of this case, provides:

1 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

2 Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].

3 Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at [595].

44 Identical etc. trade marks

(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). Note 3:        For priority date see section 12.

2.   If the Registrar in either case is satisfied:

a.   that there has been honest concurrent use of the 2 trade marks; or

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.

2.   If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:

a.   beginning before the priority date for the registration of the other trade mark in respect of:

i.the similar goods or closely related services; or

ii.the similar services or closely related goods; and

b.   ending on the priority date for the registration of the applicant’s trade mark;

the Registrar may not reject the application because of the existence of the other trade mark.

1. I note that both applications were accepted under the provisions of s 44(4) of the Act. That is to say, the examiner of the applications found the Word Mark and the Logo Mark to be deceptively similar to an earlier trade mark or marks on the Register. Nevertheless, after submissions from the Applicant the examiner applied s 44(4). Although this decision does not require re-assessment of the examiner’s reasoning, the nature of the submissions requires me to revisit those same questions.

1. As they relate to s 44, the SGPs differ only in that the Opponent nominated its registration 1734718 for UBER CONSTRUCTIONS as the basis for its ground against the Word Mark, but relied upon both registration 1734718 and application 1780133 when it came to the Logo Mark. Both the registration and the application are earlier trade marks for the purposes of s 44 since the priority dates of both are before 23 September 2016.

1. The Opponent submits that the Applicant’s Services and the Opponent’s Services are “closely related services” since both “claim the broad range of class 37 building and construction services, advisory services relating to construction, building consultancy and supervision of construction services.”

1. The Opponent’s reference to “closely related services” misunderstands the legislative provision. The proper question is whether the respective services are similar and section 14(2) of the Act provides that services are similar to other services (a) if they are the same as the other services; or (b) if they are of the same description as that of the other services. At the hearing the Applicant conceded that the claimed services are similar but I find that there is significant direct overlap of the Applicant’s Services and the Opponent’s Services such that much of what is claimed by the parties is the same.

1. What remains to be decided is (i) whether the compared trade marks are substantially identical or confusingly similar, and, if so, (ii) whether the Applicant has shown that ss 44(3) or (4) should nonetheless be applied so as to defeat the ground of opposition, and, if so, (iii) whether the Opponent might still invoke its s 58A ground of opposition4 and show its earlier use of a similar trade mark.

4               Opponent’s earlier use of similar trade mark

1.    This section applies to a trade mark (section 44 trade mark) the application for registration of which has been accepted because of:

a.   subsection 44(4); or

b.   a similar provision of the regulations made for the purposes of Part 17A.

Note: Subsection 44(4) prevents rejection of an application for registration of a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark or a trade mark whose registration is being sought where the

1. For the purposes of comparison, the relevant marks are: (Applicant)  (Opponent)

   Uber Builders and Developers     cf.     UBER CONSTRUCTIONS

cf.             UBER CONSTRUCTIONS

UBER

1. In assessing whether trade marks are substantially identical the test stated by Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd is applied:5

   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. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per

first-mentioned trade mark has been continuously used since before the priority date of the other trade mark.

1. The registration of the section 44 trade mark may be opposed on the ground that the owner of the substantially identical or deceptively similar trade mark (similar trade mark) or the predecessor in title:

a.   first used the similar trade mark in respect of:

i.similar goods or closely related services; or

ii.similar services or closely related goods;

before the owner of the section 44 trade mark or the predecessor in title in relation to the section 44 trade mark first used the section 44 trade mark; and

a.    has continuously used the similar trade mark in respect of those goods or services since that first use.

5 [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].

Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at

p 298, where the meaning of the expression was considered.

1. The Opponent’s submissions compare the Word Mark and the Logo Mark with its own registered mark, UBER CONSTRUCTIONS, appearing to ignore its pending application for UBER. In so doing it submits that:

   “…[the words] BUILDERS AND DEVELOPERS (in the Opposed mark) and CONSTRUCTIONS (in the Opponent’s mark) are clearly descriptive elements. Therefore, they do not form the ‘dominant cognitive clues’ of the Applicant’s and Opponent’s trade marks.

   Both marks clearly rely on the word UBER as the badge of origin in connection with the claimed class 37 services.

   The side-by-side comparison … should be carried out “cognisant of the essential element of the markswhich is UBER in both marks.”

2. The Opponent relies in support on two relatively recent decisions of the Federal Court where the following pairs of marks6 were held to be substantially identical:

1. It is fair to say that only a few years ago trade mark law commentators might, based on the cases as they then stood, have baulked at the proposition that that marks at  issue before me were substantially identical. However, following the more recent direction of the Federal Court it seems that the yardstick has moved slightly. I consider that current Federal Court reasoning justifies my finding that both the Word Mark and the Logo Mark are substantially identical to UBER CONSTRUCTIONS.

6 The first being in the case of Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 and the second being in the case of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, [2017] FCAFC 56.

In the comparison case of the Word Mark, I have formed that view having regard to the identical services at issue and the fact that the word “constructions” and the phrase “builders and developers” have essentially the same meaning. The terms are certainly no more separated in meaning than “radiology” and “clinical imaging”. Further, that meaning is plainly descriptive and is of no source distinguishing value. Whilst the shared word, “uber”, has a meaning in the German language which potentially carries a positive promise of the quality of the services, the word is not in my assessment so well known or well used as to be robbed of distinctive character. It is the essential feature of the two marks under comparison. Furthermore, in the comparison with the Logo Mark, the registered mark is wholly contained within the Logo Mark and the added matter comprises the word, “Australia”, of no inherent distinctiveness, and the device element showing house gables set before a stylised high-rise building. The device reinforces the word component of the mark and speaks of house or building construction. Although the character of the device is not absolutely plain, it is to my mind so obviously informative of the services that my decision is to treat it as adding nothing more to the identity of the words “uber constructions”.

1. It follows that, but for the matters identified earlier at [13], the Opponent has established its s 44(2) ground and so I turn to consider whether, on the evidence, the Applicant has shown that ss 44(3) or (4) should nonetheless be applied. Both subsections hinge on satisfaction of certain conditions of use – in one case, honest concurrent use; in the other continuous use prior to the priority date. However, both provisions require in common that the use be (i) of the relevant trade mark; (ii) as a trade mark; and (iii) in respect of similar services. I am of the view that the Applicant’s evidence is not sufficient to meet those common and foundation requirements for the following reasons.

1. All the material provided to the examiner reappears in these proceedings in the Rogalski Declaration. It includes a declaration made 11 December 2016 wherein Mr Rogalski states that he “registered the web site (sic) on 01 June 2015 and it went live on 10 September 2016.” He states that he “incorporated Uber Constructions Australia Pty Ltd (sic) on 02 December 2015” and spent over $AUD12,000 on advertising in 2015/16.

1. The Rogalski Declaration shows the engagement of a website designer and its email stating that the site went live in September 2016. There is nothing to demonstrate the content of the website then (or later). Further included are various purchase orders showing the Logo Mark (I note, without the word, “Australia”) in late 2015. Those orders itemise various goods and services. I observe, by way of example, that these include “pickup of toilet portable”, “cleaning”, “delivery”, first aid kit”, “damage waiver”, “1kg white sugar”, “Nescafe”, “full cream milk”, “Glen 20”, “bin liners”, “Hand towel”, “toilet paper”, “mop”, “foam cups”, “kitchen broom blue”, “shade cloth”, “black cable tie 200”, “cartage”, and the like. Of those purchase orders, only one has a total value exceeding $AUD2000.

1. There is an undated photograph of signage at a building site showing the word “UBER”, an incomplete application for a trade account with Beaumont Tiles bearing no approval from that company, material of no intrinsic value showing further variations of the Logo Mark where the word “Australia” is replaced by “Above All” and other examples where “builders & developers” replaces “Constructions” and “Australia”.

1. There are a number of pages given to exhibiting redacted copies of contracts, some fully executed, some not, between the Applicant and third parties, all in relation to intended works at the address, 339 - 341 Neerim Road Carnegie. This appears to be the address for the one contract for building work won by the Applicant in 2015. The exhibited contracts appear to be with various subcontractors to the job – a painting contract dated 4 August 2016, a glazing contract dated 3 May 2016, a joinery contract dated 29 April 2016, and contracts for shotcrete, capping beams, and concrete formwork (of unknown, but presumably earlier, dates).

1. In addition to the material laid before the examiner and just described, the Rogalski Declaration provides a copy of a contract dated 22 May 2017 for engagement of the Applicant’s building services at 15 Breese Street, Brunswick, Vic.; a tender for work at 253-255 Neerim Rd, Carnegie dates 23 May 2017; and purchase orders for miscellaneous building materials with values redacted, all from 2017. That concludes the Applicant’s evidence.

1. Taking this material as a whole, I observe that the Logo Mark and the variations thereon I have described are used on tender and contract documents, purchase orders and elsewhere. The words “uber constructions” are used in the Applicant’s email address, in contact information and in the text of contracts and order forms. However, I am not satisfied that the Applicant has shown that either of ss 44(3) or (4) should be applied. So far as honest concurrent use is concerned, I am to take account of the extent and duration of concurrent use of the parties’ trade marks; the degree of confusion likely to occur, and whether there has in fact been confusion.7 I consider that the degree of confusion likely to ensue is high. At the priority date, the period over which the parties had concurrently been using their marks was short. Nonetheless, the Opponent provided evidence of actual confusion in that time – a letter from the City of Port Phillip it received in error in June 2016 in connection with impermissable “out of hours” building work and intended for the Applicant’s attention and a misdirected invoice it received from “Limestone Australia”, showing the Applicant’s address as the ‘customer address’.

2. The Walsh Declaration provides evidence that the Opponent was incorporated in May 2008 and has, since then, been involved exclusively in the construction of homes along the Mornington Peninsula in Victoria. The evidence as it stood did not show the Applicant as having performed any works on the Mornington Peninsula but I find that should it choose to do so the likelihood of confusion would be intolerable. The evidence indicates to me that there is no scope for imposing a limitation of the kind contemplated by s 44(3), nor are there “other circumstances” which in my view would support registration.

1. As to s 44(4), the priority date of the Opponent’s registration for UBER CONSTRUCTIONS is 13 November 2015. The Applicant company was not incorporated until December 2015. Any use before then was presumably by Mr Rogalski himself. The Applicant’s website, however it may have appeared, was not functional until September 2016. The claimed 2015/16 advertising spend is de minimus and during that period the Logo Mark appears to have been undergoing

7 John Fitton & Co Ltd’s Application (1949) 66 RPC 110; McCormick & Co Inc v McCormick (2000) 51 IPR 102.

regular change. The 2015 purchase orders show various iterations of the Logo Mark and are for small cleaning or food articles of trifling value. The only instances of possible use of the Logo Mark prior to 13 November 2015 in connection with relevant services are found in some of the contract paperwork relating to 339 - 341 Neerim Road, Carnegie. However, the dates are unclear and most of the subcontractors to the job were engaged well after that time. Before 13 November 2015 there is essentially no use of the Word Mark in a trade mark sense in respect of similar services. The single example of any public use of the Word Mark is that shown on the signage at a building site, presumably that of 339 - 341 Neerim Road, judging from the annotation to the exhibit, “Neerim”. As stated, that exhibit is undated and, given the dates of many of the contracts relating to that address, it is questionable whether the signage was in place by 13 November 2015. In short, there is no compelling evidence of use of either the Word Mark or the Logo Mark that would trigger the application of s 44(4).

1. In the result, the Opponent has established a ground of opposition under s 44 of the Act in respect of both the Word Mark and Logo Mark.

Decision

1. Section 55 of the Act relevantly provides:

55 Decision

1.   Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

a.   to refuse to register the trade mark; or

b.   to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. The Opponent has established a ground of opposition it nominated. Accordingly, applications 1796840 and 1797491 are refused.

Costs

1. The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event and so I award costs against the

Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Debrett Lyons Hearing Officer

Trade Mark Oppositions and Hearings 22 July 2019

Appendix

Advisory services relating to building construction materials; Advisory services relating to construction; Advisory services relating to property development building and construction services; Advisory services relating to the construction of buildings; Building (construction) supervision; Building and construction of real estate subdivisions and developments; Building and construction services; Building construction; Building construction advisory services; Building construction consultancy; Building construction supervision; Building project management (building construction supervision); Civil construction services; Construction; Construction consultation; Construction information; Construction of buildings; Development of land (construction); Development of property (building and construction services); Housing construction; Housing development (building and construction services); Landscaping (construction); Provision of construction advice; Structural engineering services (construction); Supervision of building construction; Supervision of construction