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...

Uber Constructions Pty Ltd opposed two trade mark applications: application 1796840 for "Uber Builders and Developers" and application 1797491 for a "UBER CONSTRUCTIONS AUSTRALIA Logo," both filed by Uber Builders... The opposition was heard by Debrett Lyons.

The primary legal issue before the court was whether the applicant's trade mark applications infringed section 44 of the *Trade Marks Act 1995* (Cth), which concerns trade marks that are substantially identical or deceptively similar to earlier registered trade marks. The opponent nominated its own registered trade mark and an earlier application as the basis for its opposition. The court was required to determine if the services offered under the applicant's trade marks were similar to those offered under the opponent's earlier marks, and if the marks themselves were deceptively similar.

The court applied the ordinary civil standard of proof, on the balance of probabilities, to the grounds of opposition. The relevant time for assessing the grounds was the priority date of the applications, which was 23 September 2016. While the examiner had initially accepted the applications under section 44(4), the court revisited the question of deceptive similarity. The opponent argued that the services were "closely related," but the court clarified that the correct test under section 14(2) of the Act is whether the services are the same or of the same description. Although the applicant conceded similarity at the hearing, the court found a significant direct overlap between the services, with much of what was claimed by both parties being the same.