Opposition by Uber Technologies, Inc to registration of trade mark application number 1807760 (class 44) - UBERDOC - in the name of UBERDOC PTY LTD

[2021] ATMO 158

TRADE MARKS ACT 1995

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

Re:Opposition by Uber Technologies, Inc to registration of trade mark application number 1807760 (class 44) - UBERDOC - in the name of UBERDOC PTY LTD

Delegate:	Timothy Brown
Representation:	Opponent: Miriam Stiel of Allens Patent & Trade Mark Attorneys Applicant: Vinod Kalyan of Kalyans Lawyers
Decision:	2021 ATMO 158 Trade Marks Act 1995 (Cth) – opposition under section 52 – sections 42(b), 60, and 62A considered – no ground established – trade mark to proceed to registration

Background

1. This is an opposition under section 52 of the Trade Marks Act 1995 (Cth) (‘Act’) to the registration of the following trade mark:

   Trade Mark Number:         1807760

   Trade Mark:   UBERDOC (‘Trade Mark’)

   Applicant:                            UBDERDOC PTY LTD (‘Applicant’)

   Priority Date:   8 November 2016

   Specification:            

   Class 44: Advisory services relating to medical problems; Advisory services relating to medical services; Aged care services (medical and nursing services); Arranging of medical treatment; Behavioural analysis for medical purposes; Cardiology (medical services); Compilation of medical reports; Conducting of medical examinations; Consultancy and advisory services in relation to medical services; Dermatology (medical services); Dietetic counselling services (medical); Emergency medical services; Endocrinology (medical services); Gastroenterology (medical services); General practice (GP) medical services; Health care consultancy services (medical); Lifestyle counselling (medical); Location of medical facilities for emergency medical treatment; Medical advice for individuals with disabilities; Medical advisory services; Medical analysis services; Medical assistance; Medical care services; Medical clinic services; Medical counselling; Medical examination of individuals; Medical health assessment services; Medical obstetrics services; Medical screening; Medical services; Medical services for treatment of the skin; Medical treatment services; Neurology (medical services); Nursing (medical); Oncology (medical services); Ophthalmology (medical services); Paediatric medical services; Palliative care services (medical and nursing services); Preparation of psychological profiles for medical purposes; Preparation of reports relating to medical matters; Providing information including online, about medical services, and veterinary services; Provision of medical assistance; Provision of medical facilities; Provision of medical information; Provision of medical information relating to poisons; Provision of medical services; Provision of medical treatment; Psychological testing for medical purposes

   (‘Applicant’s Services’)

2. The Trade Mark was advertised for acceptance in the Official Journal of Trade Marks on 21 March 2019.

3. A Notice of Intention to Oppose was filed by Uber Technologies, Inc (‘Opponent’) on 20 May 2019 and the Statement of Grounds and Particulars (‘SGP’) was subsequently filed on 20 June 2019.

4. A Notice of Intention to Defend was filed by the Applicant on 11 November 2019.

5. Evidence in Support was filed by the Opponent on 13 December 2019. Evidence in Answer was filed by the Applicant on 18 March 2020. Evidence in Reply was filed by the Opponent on 19 May 2020.

6. On 15 September 2020 a hearing was requested by the Opponent. Submissions were filed by both parties prior to the hearing, and the matter was heard before me, a delegate of the Registrar of Trade Marks on 2 August 2021. In attendance for the Opponent was Miriam Stiel of Allens Patent and Trade Mark Attorneys accompanied by Jenny Baker and Paul Mercedes. Vinod Kalyan of Kalyans Lawyers appeared for the Applicant.

   Evidence

   The Opponent

7. The Opponent’s evidence consists of the following declarations and exhibits:

   Evidence in Support

   ·A declaration made by Raphael Gutierrez on 12 December 2019 (‘Gutierrez Declaration’) with Exhibit RG-1 and Confidential Exhibit RG-2.

   Evidence in Reply

   ·A second declaration made by Raphael Gutierrez on 18 May 2020 with Exhibits RG-3 to RG-5, and Confidential Exhibit RG-6 (‘Second Gutierrez Declaration’).

8. Raphael Gutierrez, the Opponent’s Director of Intellectual Property, declares that the Opponent was founded in 2009 and began as a provider of a mobile software application that enabled users to obtain, or provide, on demand transportation and delivery services. The initial name of the app was ‘UberCab’, which was subsequently replaced by the name UBER (‘UBER Trade Mark’) in October 2010.

9. The Opponent commenced use of the UBER Trade Mark in Australia in 2012. At present the Opponent provides software applications under the UBER Trade Mark to more than 60 countries and 700 cities world wide.

10. The Gutierrez Declaration demonstrates that the Opponent uses a number of trade marks that incorporate UBER as prefix, namely:

    ·UBERX

    ·UBERPOOL:

    ·UBER COMFORT

    ·UBER ASSIST

    ·UBER PREMIER

    ·UBER WAV

    ·UBERXL

    ·UBER TAXI

11. In addition to its ride sharing application, the Gutierrez Declaration outlines the use of UBER by the Opponent in connection with the following services:

    ·UBER EATS: a software application that facilitates food and grocery ordering and delivery, launched in Australia in April 2016.

    ·UBER FREIGHT: a logistics service that matches truck drivers with cargo.

    ·UBER AIR: an aerial transportation service.

    ·UBER HEALTH: on demand health accessibility service.

    ·UBER WORKS: A shift-work finder service.

    ·scUBER: a rideshare submarine service.

    ·UBER COPTER: a helicopter services for riders to access and connect to transport hubs.

    ·UBER ASSIST: ride sharing service for users with accessibility requirements.

12. The Trade Marks listed at paragraphs [10] to [11] are collectively referred to as the ‘Uber Marks’.

13. The Gutierrez Declaration includes the Opponent’s advertising expenditure and figures pertaining to the use of the Opponent’s ride sharing applications from 2012 to the priority date of the Trade Mark. The Opponent requested all information pertaining to its subscriber figures, driver and rider figures, and advertising expenditure remain confidential. As such, I will merely note that this information indicates the Opponent has invested significant amounts of expenditure in promoting the UBER Trade Mark and that a substantial number of consumers have utilised the software application in Australia between 2012 and the priority date of the Trade Mark.

14. The Gutierrez Declaration also contains the following evidence of use and promotion of the Uber Marks:

    ·Use of the UBER Trade Mark across various social media platforms, namely YouTube, Instagram, Facebook, Twitter and LinkedIn.

    ·Website traffic figures from 2017 and 2018 for the Opponent’s domain < and exhibits demonstrating of use of the UBER Trade Mark on the Opponent’s website from 2011 to 2019.

    ·Use of the UBER Trade Mark in various hashtags, including on social media platforms, namely #uberCARES, #uberpool, #uberelevate, #UberAIR, #uberpresents and #ubereats.

    ·Published articles featuring the UBER Trade Mark on third party websites, such as CNBC, The Economist, Forbes, Bloomberg Businessweek and Travel Pulse.

    ·Unsolicited press publications in the Sydney Morning Herald, The Gold Coast Bulletin, The Australian, The Herald Sun, The Australian Review, The Daily Telegraph, and The Western Australian featuring the UBER Trade Mark.

    ·Use of the UBER Trade Mark in sponsorships of the 2019 Australian Tennis Open, 2019 Men’s Cricket World Cup, 2018 ICC Women’s World T20 cricket tournament, the 2018 and 2019 Australian Grand Prix, Adelaide Fringe Festival 2018, Chanel 9 Telethon in 2017, NRL Grand Final 2017, AFL Grand Final 2017, Brisbane Festival 2017, Ekka carnival in August 2017, Tropfest 2017, and the Melbourne Cup from 2016 to 2019.

    ·Partnered advertising campaign with Mars Incorporated in October 2016, which allowed users of the UBER EATS Application to order confectionary and costumes for Halloween.

    ·An article from Wall Street Journal reporting that the Opponent was the most valuable venture backed private company in the world. In October 2018 the Wall Street Journal also valued UBER at $120 billion.

    ·A report from Interbrand, a brand consultancy company, which ranks UBER as one of the top 100 global brands in 2019.

15. Mr Gutierrez declares that the Opponent first became aware of the Applicant when the Applicant launched a software application branded under the trade mark UBERDOC. Around August 2018 the Opponent requested that the Applicant cease using the Trade Mark, and in September 2018 the Opponent submitted requests to the Apple App Store, Google Play Store, Instagram and Twitter to have the application removed from the platforms.

    The Applicant

16. The Applicant’s evidence consists of a declaration made by Sudeer Rajbally Mahedeo on 18 March 2020 (‘Mahedeo Declaration’) and annexures SRM-1 to SRM-3.

17. Mr Mahedeo declares that the Applicant began using the Trade Mark on 4 November 2016 in connection with a software application that facilitates an interaction between patients and health care professionals. The app allows users to request medical services, such as home visits by doctors, remote consultation and access to medical documents or scripts.

18. The Applicant is also the owner and registrant of the domain name <uberdoc.com>.

19. In addition to the Trade Mark, the Applicant also applied to register the trade mark URBANDOC on 18 September 2018.

    Grounds of Opposition, Onus and Relevant Date

20. The nominated grounds of opposition in the Statement of Grounds and Particulars were sections 42(b), 43, 44, 59, 60 and 62A of the Act. At the hearing the Opponent pressed sections 42(b), 60 and 62A. For completeness I find that sections 43, 44 and 59 are not established.

21. The Opponent bears the onus of establishing one or more of the grounds of opposition.[1] The required standard of proof is on the balance of probabilities.[2]

    [1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

    [2] Pfizer Products Inc v Karam (2006) FCA 1663, [6]-[26] (Gyles J); Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

22. The date at which the rights of the parties will be determined is the priority date of the Trade Mark, 8 November 2016 (‘Priority Date’).

    Discussion and Reasons

    Section 60

23. Section 60 of the Act provides:

    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.

    Reputation

24. Reputation, in the context of section 60, refers to ‘recognition of [the mark] by the public generally’.[3] It is not a factor that is assumed and must be established by the Opponent as a matter of fact.[4]

    [3] McCormick & Co Inc v McCormick [2000] FCA 1335, [81] (Kenny J) (‘McCormick’).

    [4] Conagra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 176, [118] (Lockhart J) (‘Conagra’).

25. The reputation of a trade mark may be demonstrated in a variety of ways. For example, it may be established by demonstrating a significant number of people are exposed to a trade mark,[5] or inferred from a high volume of sales,[6] advertising expenditure or other promotions.[7]

    [5] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91] (Heerey J).

    [6] McCormick (n 3) [86].

    [7] Ibid.

26. In Rodney Jane Racing Pty Ltd v Monster Energy Company O’Bryan J observed that the reputation of a trade mark has both qualitative and quantitative dimensions:

    The reputation of a trade mark has quantitative and qualitative dimensions. The quantitative dimension concerns the breadth of the public that are likely to be aware of the mark, which can be evidenced by the quantum of sales, advertising and promotion of goods or services to which the mark is applied. The qualitative dimension concerns the image and values projected by the trade mark, which affects the esteem or favour in which the mark is held by the public generally…[8]

    [8] [2019] FCA 923, [83].

27. The Opponent submits that as of the Priority Date, the UBER Trade Mark had a reputation globally, and in Australia. The Opponent also relies on the reputation of the Uber Marks, collectively, and the following evidence:

    ·The Opponent’s use of the UBER Trade Mark in Australia since 2012.

    ·The significant number of transactions and sales made using the UBER app before the Priority Date.

    ·The number of downloads and users of the UBER apps before the Priority Date.

    ·The substantial marketing expenditure and promotional activities in Australia in connection with the UBER Trade Mark.

    ·The use of the UBER Trade Mark on the social media platforms Twitter, Facebook, Instagram, YouTube and LinkedIn.

    ·The report from Interbrand ranking the UBER Trade Mark world’s top 100 brands.

28. The Applicant does not contest the reputation of the UBER Trade Mark in relation to software services. Rather, the Applicant submits that section 60 requires the Opponent to demonstrate reputation of the UBER Trade Mark in respect of the Applicant’s Services.

29. In this respect, I do not agree with the Applicant. In Qantas Airways Limited v Edwards Yates J discussed, in the context of section 60, the relationship between the goods or services of an opposed trade mark and the reputation of another trade mark:

    A further matter to note in relation to the s 60 objection is that, contrary to the respondent’s submission, the “other” mark need not have acquired a reputation in Australia that is specific to the goods or services which are the subject of the opposed application. However, I accept that if such a reputation does exist at the relevant time, it is likely to be a most material consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.[9]

    [9] Qantas Airways Limited v Edwards [2016] FCA 729, [143].

30. The requirements of section 60 are well established. The Opponent must demonstrate that another trade mark had acquired a reputation in Australia before the priority date of the Trade Mark, and that because of the reputation of that trade mark, use of the opposed trade mark would cause deception or confusion. The nexus between the goods or services associated with the reputation of the UBER Trade Mark and the Trade Mark is a key factor in determining whether use of the Trade Mark would be likely to deceive or cause confusion, but it is not a requirement of section 60.

31. The Opponent submits that a significant part of the reputation of the UBER Trade Mark involves an expectation by consumers that the Opponent has extended use of the UBER Trade Mark to range of different services. However, there is limited evidence that demonstrates the use of the UBER Trade Mark, or any of the UBER Marks, on services other than an app that facilitates either transportation or delivery services. The Opponent drew attention to its activities in the connection with health services. In particular, the various health programs and services launched under the trade mark UBER HEALTH (‘UBER Health Trade Mark’), which include:

    ·The use of the Uber ride sharing platform to transport registered nurses to administer flu shots to the Opponent’s customers in the United States of America in 2015 and 2016. This service was also offered in South Africa in April 2016.

    ·On demand haze masks to cope with rising Pollutant Standards Index levels in Singapore in September 2015.

    ·On demand doctor request for diabetes risk assessment launched in Egypt in April 2016.

32. In respect to UBER HEALTH Trade Mark, its use is confined to countries other than Australia. It is possible for the reputation of a trade mark in Australia to be established by use in foreign jurisdictions,[10] though this may be challenging where there is no genuine attempt to target or otherwise engage Australian consumers. In the present case, the use of the UBER HEALTH Trade Mark is limited, and in my view, falls short of establishing any individual reputation for the UBER HEALTH Trade Mark, or any reputation for the UBER Trade Mark in respect of health and medical services.

    [10] ConAgra (n 4) [117-118].

33. I note that the Opponent launched a partnership with the Australian Red Cross in January 2016 to assist with the transport of volunteers during states of emergency, and deliver goods during charitable events, such as clothing drives. A similar service was also offered by the Opponent under the Trade Mark UBERASSIST, which was used across various cities in Australia in May 2015 in connection with co-ordinating access to transport services for people with various accessibility requirements. As with the other Uber Marks, the use of these trade marks is connected specifically to software that facilitates access to transport or delivery services.

34. The evidence provided by the Opponent establishes that the UBER Trade Mark had, as of the Priority Date, a significant reputation as a software application used for transport services. By the Priority Date, substantial number of users had downloaded and used the Opponent’s applications in Australia. This use was supported by substantial advertising expenditure and a variety of well publicised promotional activities. Most Australians would be aware of the software provided under the UBER Trade Mark, and of the Opponent’s practice of using UBER as a prefix in other trade marks. Accordingly, I am satisfied that as of the Priority Date, the UBER Trade Mark had a very strong reputation in Australia in respect of an application used to facilitate access to transport and delivery services.

35. In respect to the Opponent’s other Uber Marks, I note that use before the Priority Date is limited. The reputation of a trade mark must be shown to have existed at the Priority Date. The Opponent’s UBER EATS Trade Mark has been used extensively on an application for food delivery services since January 2016. However, there is only a short period of time between the launch of UBER EATS in Australia and the Priority Date of the Trade Mark. For completeness, I accept that the evidence indicates that the Opponent engages in brand extension by using UBER as prefix in variety of other trade marks, but I am not satisfied any of the other UBER Marks individually have a strong reputation as of the Priority Date.

    Likelihood of Deception or Confusion

36. The existence of a reputation does not necessarily mean use of the Trade Mark would be likely to deceive or cause confusion. Reputation is a required element of section 60, and a factor that informs the likelihood of deception or confusion under section 60(b). Other relevant factors include the similarity of the trade marks, and the connection between the relevant goods or services. The section 60 ground of opposition will only be established if the reputation of the UBER Trade Mark is such that the use of the Trade Mark would likely result in a real tangible danger of deception or confusion.

37. The concept of ‘deceive’ and ‘cause confusion’ was explained by Richardson J in the New Zealand decision of Pioneer Hi-Bred Corn Co v Hy-line Chicks Pty Ltd:

    ‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.[11]

    [11] [1979] RPC 410, 423.

1. The test for deception or confusion turns on whether use of the Trade Mark would result in a reasonable number of people being caused to wonder whether its services derive from the same trade source as another trade mark.[12]

   [12] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020, [50] (French J).

2. The Opponent submits that the Trade Mark follows the same structure as the Uber Marks, such as UBER EATS, UBERX or UBER POOL, and that the additional element of the Trade Mark, being the word DOC, does little to distinguish the Trade Mark from the UBER Trade Mark. On these bases and given the significance of the reputation of the UBER Trade Mark in Australia, the Opponent submits use of the Trade Mark would be likely to deceive or cause confusion.

3. Section 60 is not based on the requirement that the trade marks are substantially identical or deceptively similar. Nevertheless, the degree of similarity between the relevant trade marks remains a relevant consideration when assessing the likelihood of confusion that could result from use of the Trade Mark.[13] In the present case, the UBER Trade Mark is comprised solely of the word UBER. The Trade Mark consists of the words UBER and DOC. The element DOC is the sole difference between the trade marks. DOC, being an abbreviation for ‘doctor’, is descriptive in the context of the various medical and health services specified in the Applicant’s Services and does little to distinguish trade marks. Accordingly, there is a high degree of similarity between the trade marks. I also agree with the Opponent that use of the word UBER in this fashion is consistent with the Opponent’s use of UBER in the majority of the Uber Marks.

   [13] Qantas Airways Ltd v Edwards [2016] FCA 729, [142] (Yates J).

4. There is far less similarity between the Applicant’s Services and software for which the UBER Trade Mark holds a reputation. The UBER Trade Mark has a strong reputation that is limited software that facilitates access for transport services.  The Applicant’s Services are, in general, health care and medical services. These are not services associated with the reputation of the UBER Trade Mark. While the differences between the goods and services is not decisive, it is generally more difficult to demonstrate that use of a trade mark in an entirely different field of activity would be likely to deceive or cause confusion. These challenges were explained by Davies J in Singtel Optus Pty Limited v Optum Inc:

   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.[14]

   [14] Singtel Optus Pty Limited v Optum Inc [2018] FCA 575, [203].

5. The Opponent submits that the provision of the Applicant’s Services via a software application is also a factor that would increase the likelihood of confusion. Although not referenced explicitly, I accept that delivery of the Applicant’s Services via an application would fall notionally within the scope of the Applicant’s specification. Software applications are used to deliver a wide range of services and many traders facilitate their services, to at least some degree, via an application. However, even considered in the context of the delivery of the Applicant’s Services via an app, there remains a significant distinction between the various medical and health services specified in the Applicant’s Services and the software associated with the reputation of the UBER Trade Mark.

6. In my view consumers would appreciate and understand the differences between the Applicant’s Services and those associated with the reputation of the UBER Trade Mark. A consumer encountering health or medical services bearing the Trade Mark, even if facilitated via an app, would not be likely to be confused or deceived as to the origin of those services because of the reputation of the UBER Trade Mark. Accordingly, I am satisfied that there would not be a real tangible danger of people being caused to wonder whether a connection exists between the Trade Mark and UBER Trade Mark or the Opponent’s family of Uber Marks.

7. The ground for opposition under section 60 of the Act has not been established.

   Section 42(b)

8. Section 42(b) of the Act provides:

   An application for the registration of a trade mark must be rejected if:

   …

   (b)    its use would be contrary to law.

9. The Opponent relies on sections 18 and 29 of the Australian Consumer Law (‘ACL’) of Schedule 2 of the Competition and Consumer Act 2010 (Cth) and the tort of passing off as the basis for the ground of opposition under section 42(b) of the Act.

10. In order to succeed in an opposition under section 42(b) of the Act, the Opponent must demonstrate on the balance of probabilities that use of the Trade Mark would contravene section 18 or 29 of the ACL or constitute passing off. [15]

    [15] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).

    Australian Consumer Law

11. Sections 18 and 29 of the ACL require there to be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s goods due to the conduct or representations of the Applicant. Importantly, the requirement to mislead or deceive the relevant consumer imports a stricter requirement than section 60 of the Act.[16]

    [16] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44, [8] (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [32]-[33] (Stewart J).

12. For the reasons outlined in relation to the section 60 ground of opposition, in my view it is not likely that use of the Trade Mark would be likely to mislead or deceive an ordinary or reasonable consumer of the relevant services into believing that the Trade Mark and any of the UBER Trade Mark are related, or that there is any relationship of the sort described in section 29 of the ACL.

    Passing Off

13. Where a trade mark does not contravene sections 18 or 29 of the ACL, it is unlikely to amount to passing off.[17] Hill J noted in Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771 that:

    The scope for the operation of s.52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s.52 or s.53 will invariably mean that proceedings for passing off would likewise fail: Taco Company of Australia Inc v. Taco Bell Pty Ltd (1982) 42 ALR 177, 206; Telmak Teleproducts (Aust) Pty Ltd v. Coles Myer Ltd (unreported) 21 July 1989 Full Federal Court at p 18[18]

    [17] Monster Energy v USA Nutraceuticals Inc [2017] ATMO 22, [58] (Hearing Officer Robert Wilson).

    [18] Re Equity Access Pty Ltd v WestpacBanking Corporation [1989] FCA 771, [40].

14. Sections 52 and 53 of the Trade Practice Act 1974 (Cth) were the antecedents of section 18 and 29 of the ACL. Given my findings in relation to section 18 and 29 of the ACL, I am also satisfied that use of the Trade Mark would not constitute passing off.

15. In consideration of the above reasons, the ground of opposition under section 42(b) has not been established.

    Section 62A

16. Section 62A provides:

    The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

17. ‘Bad faith’ is not defined in the Act. In Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81 Dodds-Streeton J considered the concept of bad faith drawing from United Kingdom authority:

    Bad faith, in the context of s 62A, does not, in my opinion, require, although it includes, dishonesty or fraud. It is a wider notion, potentially applicable to diverse species of conduct.

    The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone.  An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.

    Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.

    The proposition advanced by Sports Warehouse, that mere awareness that an overseas company owning the mark is already operating or intending to operate in Australia would amount to bad faith, is unduly absolute. The question is whether, in all the particular circumstances, the applicant’s knowledge was such that his decision to apply for registration at the relevant date would be regarded as in bad faith by persons adopting proper standards.[19]

    [19] Fry Consulting Pty Ltd v Sports Warehouse (No 2) [2012] FCA 81, [164]-[167].

18. The meaning of ‘bad faith’ was also considered in Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty:

    For an assessment of “bad faith” as it applies to such a situation it would appear that there would need to be an element of intentional dishonesty or a deliberate attempt to mislead the Registrar in some way in the claim made by means of the application. In circumstances where an applicant claims that the application was not made in bad faith but, rather, as a result of its own ignorance or naivety, then the evidence would need to show that the circumstances were such that the “reasonable man” standing in the shoes of the applicant, should be aware that he ought not to apply for trade mark registration.[20]

    [20] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty [2009] ATMO 26, [11] (Hearing Officer Nancarrow).

19. Accordingly, I am required to consider the subjective element of the Applicant’s knowledge at the time of making the application and decide whether the Applicant’s behaviour fell short of acceptable commercial standards.

20. The Opponent submits that having regard to the reputation of the UBER Trade Mark and its history of using other Uber Marks centred around the UBER prefix, the Applicant’s behaviour falls short of acceptable standards of commercial behaviour.

21. The Opponent also relies on the following events and actions of the Applicant:

    ·Lapsing of the Trade Mark on 2 February 2019 and subsequent extension of time request under section 224 on 28 February 2019.

    ·Obtaining the domain name < on 10 September 2018.

    ·Filing of trade mark application number for UBRANDOC on 11 September 2018.

    ·The change of the Applicant’s company name to ‘Urban Doctor Technologies’ on 12 September 2018.

    ·Use of a software app to deliver the Applicant Services.

    ·Correspondence between the parties concerning requests issued by the Opponent to remove the Applicant’s app from the Google Play and Apple App stores.

    ·A Queensland Times Newspaper article dated 23 October 2018, which include quotes from the Applicant regarding this present trade mark dispute and an intention to rebrand to another trade mark.

22. I have previously addressed the reputation of the UBER Trade mark in relation to the section 60 ground of opposition. Unlike section 60, the question of whether the use of the trade mark would cause deception or confusion is not determinative when addressing bad faith.[21] The reputation of the UBER Trade Mark, the suite of other trade marks owned by the Opponent, and the prior disputes between the parties provide context for the Applicant’s decision to apply for registration of the Trade Mark, but ultimately it is a question of whether the Applicant’s conduct falls short of the acceptable commercial standards.

    [21] Dc Comics v Cheqout Pty Ltd [2013] FCA 478, [76] (Bennett J).

23. Mere awareness of the UBER Trade Marks is not a basis for bad faith. Furthermore, given the differences between the Applicant’s Services and those associated with the Opponent’s Trade Marks that I discussed in relation to the section 60 ground of opposition, I do not consider the Applicant’s decision to apply for registration of the Trade Mark unreasonable.

24. The Opponent submits that the events listed at [58] were a response to the takedown request issued by the Opponent to the Apple App Store and Google Play Store and reflect an intention of the Applicant to rebrand to the trade mark URBANDOC. I have considered the correspondence between the parties, the extension of time filed by the Applicant, and the article from the Queensland Times dated 23 October 2018. I note that the Applicant denies any intention rebrand, and that the veracity of the comments made in the newspaper article were disputed in Mahedeo Declaration. There is also no evidence of any agreement between the parties to assign or withdraw the Trade Mark.

25. I am not convinced that actions taken by the Applicant after the Priority Date indicate that the Applicant acted in bad faith. Section 62A provides that a trade mark application may be opposed on the grounds that it ‘was made in bad faith’. Although events that occurred after the priority date may be used to infer that a trade mark application was made in bad faith,[22] the evidence still needs demonstrate that the Applicant’s behaviour in making the trade mark application fell short of acceptable commercial standards. In the present case, the events referred to by the Opponent occurred several years after the filing of the trade mark application and offer little insight into the Applicant’s decision to apply for registration of the Trade Mark.

    [22] Ibid [77]; Enagic Co Ltd v Horizons (Asia) Pty Ltd (No 3) [2021] FCA 1512, [274] (Charlesworth J).

26. I am of the view that the Applicant’s act of filing for registration of the Trade Mark with knowledge of the UBER Marks, the subsequent lapsing and extension of time to revive the Trade Mark, and the circumstances surrounding the removal requests issued by the Opponent are not indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious in character. Accordingly, on the balance of probabilities I am satisfied that the trade mark application was not made in bad faith.

27. The ground of opposition under section 62A has not been established.

    Decision

28. Section 55(1) of the Act relevantly provides:

    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.

29. The Opponent has failed to establish any of their nominated grounds of opposition. Accordingly, trade mark 1807760 may proceed to registration one month from the date of this decision.

30. Should the Registrar be served with a notice of appeal before registration of the trade mark, I direct that registration of the trade mark not occur until the appeal has been decided or discontinued, and that any disposition of the application be in accordance with the Court’s orders or direction.

    Costs

31. Both parties sought costs. As the Opponent has not established a ground of opposition, I award costs against the Opponent under section 221 of the Act in accordance with Schedule 8 of the Trade Mark Regulations 1995 (Cth).

    Timothy Brown
    Hearing Officer
    Oppositions and Hearings
    Trade Marks and Designs
    16 December 2021