Uber Builders & Developers P/L and Uber Constructions Australia Ltd v Uber Constructions P/L

[2020] ATMO 57

TRADE MARKS ACT 1995

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

Re:Opposition by Uber Builders & Developers Pty. Ltd. and Uber Constructions Australia Pty. Ltd. to registration of trade mark application number 1780133 (class 37) - UBER - in the name of Uber Constructions Pty. Ltd.

Delegate:

M. Cooper

Representation:

Opponents: Self-represented

Applicant: Herbert Smith Freehills

Decision:

[2020] ATMO 57

Trade Marks Act 1995 (Cth) – opposition under section 52 – ss 58 and 60 considered – no grounds established – trade mark to proceed to registration.

Background

1.     This matter concerns an opposition by Uber Builder & Developers Pty. Ltd. and Uber Constructions Australia Pty. Ltd. (‘Opponents’), under s.52 of the Trade Marks Act 1995 (‘the Act’), to registration of the trade mark detailed below in the name of Uber Constructions Pty. Ltd. (‘Applicant’):

Application Number: 1780133

Trade Mark: UBER (‘Trade Mark’)

Filing Date: 29 June 2016

Services: Class 37: 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 (‘Services’)

2.     The Trade Mark was examined and advertised as accepted for possible registration on 24 November 2016 in the Australian Official Journal of Trade Marks.

3.     On 6 December 2016, following prior attempts to file a Notice of Intention to Oppose (‘NIO’) and a Statement of Grounds and Particulars (‘SGP’), the Opponents filed a valid, amended NIO and an amended SGP which cited opposition grounds under sections 58 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 20 January 2017.

Evidence

4.     On 16 March 2017 a declaration dated 15 March 2017 was filed by David Rogalsky, the Opponents’ director, with Annexures A – D. While not so identified by the declarant, I have treated it as the Opponents’ Evidence in Support (‘first Rogalsky declaration’).

5.     On 20 March 2017 Herbert Smith Freehills lodged the Applicant’s so-called ‘Evidence in Support’ which comprised a declaration dated 3 February 2017[1] by Darren Walsh, the Applicant’s manager and director, with Exhibits 1-11 and Confidential Annexures 1-3. I have treated this as the Applicant’s Evidence in Answer (‘Walsh declaration’).

[1] The fact that this predated the Opponents’ Evidence in Support is not explained. I note an earlier successful opposition by the Applicant to registration of the Opponents’ trade marks 1796840 and 1797491 ([2019] ATMO 111) however the Walsh declaration in that matter was differently dated. I also note a slight difference in the spelling of the Opponents’ director’s name, however nothing turns on this.

6.     On 5 June 2017 the Opponents filed ‘further Evidence in Support’ which comprised a further declaration by David Rogalsky with Annexures A – F (‘second Rogalsky declaration’). I have treated this as Evidence in Reply.

7.     As neither party requested a hearing, IP Australia wrote to the parties on 2 January 2019 advising that a decision would be made on the written record and that written submissions should be filed within one month of the date of the correspondence. Neither party filed submissions.

8.     As a delegate of the Registrar, I have proceeded to decide the matter on the filed material.

Opponents’ evidence

9.     The first Rogalsky declaration lists the Opponents’ dates of incorporation in 2015 and their advertising expenditure and turnover from 1 July 2016. Documents such as purchase orders and contracts purporting to demonstrate use of the Opponents’ trade mark are also annexed. The trade mark to which the Opponents refer is not specifically identified in either Rogalsky declaration, but I infer it is the logo which appears on the documents as discussed further below (paragraph 19, ‘the Opponent’s mark’). Mr. Rogalsky claims significant use of the trade mark, that it is well known in the marketplace and it has developed a significant reputation. He refers to and notes the Opponents’ website which he says went ‘live’ on 10 September 2016. He states that any conflict in the marketplace arising from use of the Opponents’ mark would benefit the Applicant.

10.   The second Rogalsky declaration states that the Opponent [sic] is ‘a high volume construction company that has been in continuous operation since its incorporation’, claiming significant revenue and engagement in multiple large construction projects.

Applicant’s evidence

11.   The Walsh declaration states that the Applicant’s construction business has been in continuous operation since 2008 and it has used the Trade Mark extensively and continuously since then. Exhibits demonstrating the business name registration and incorporation in 2008 were attached, as were insurance documents and confidential bank statements showing business accounts operating from at least December 2008. Trade Mark use was shown on invoices issued from 2008 to 2015, an industry award in 2012, a 2010 magazine article profiling the company and site signage photographs from 2011-2013. The Applicant claims it has established significant goodwill and reputation as a result of this continuous use. It notes its use of its other registered Trade Mark 1734718, registered 13 November 2015, for ‘Uber Constructions’ in class 37. Mr. Walsh observes that the Opponents’ claims of use since 2015 post-date the Applicant’s first use of the Trade Mark. He noted confusion in the market and attached documents evidencing that confusion.

Grounds of Opposition and Onus

12.   The Opponents bear the onus of establishing one or more of the grounds of opposition and the standard of proof required is on the balance of probabilities.[2]

[2] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156 affirming the approach of Gyles J in Pfizer Products Inc. v Karam [2006] FCA 1663; (2006) 70 IPR 599 [6-26].

13. As noted above, the Opposition grounds claimed in the SGP are those under sections 58 and 60 of the Act.

14.   The time at which a ground of opposition must be established is the date of filing of the application for registration.[3] In this case that date is 29 June 2016 (‘the relevant date’ also referred to as ‘the priority date’ in s 60). 

Consideration and reasons

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

Section 58

15. Section 58 of the Act provides:

58 Applicant not owner of trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

16. Having regard to s 58, the Full Federal Court in Pham Global identified the relevant principles.[4] To succeed on this opposition ground, an opponent needs to establish that there is another mark that is identical or substantially identical to the applicant’s mark, that this mark has been used in respect of goods and services that are ‘the same kind of thing’ as the trade mark and that another person/entity has the earlier claim to ownership based on its use of its mark/s before the filing of an applicant’s mark or any use of it as a trade mark.

[4] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379, 390-1 [50].

17.   The Opponent’s SGP particulars in this regard are presented somewhat irregularly however they relevantly note that Uber Builders and Developers Pty Ltd was incorporated on 25 May 2015 and Uber Constructions Australia Pty Ltd on 2 December 2015. Further:

‘My use of the trademark pre-dates and post-dates the Lodgement Date of the conflicting trademarks [sic]. The trade mark is used in tendering, entering into legally binding contracts, signage, my web site, purchase orders, and clothing. The trade mark is inextricably used in all facets of my business. I have enclosed a sample dossier of documents evidencing the use of my trade mark and relevant dates….My use of the word Uber was carefully considered. When I chose it the conflicting trademarks [sic] had not appeared on the Atmoss database… I registered the web site on 01 June 2015 and it went live on 10 September 2016. Please see the Current and Completed Projects on our web site.’

18.   As noted above, neither party provided submissions.

Prior use

19.   The Opponents do not specifically identify the trade mark for which they assert prior use. The annexed materials show use of the below logo which I infer is the relevant Opponents’ mark and accordingly I have assessed the Opponents’ claims by reference to it:[5]

[5] This is also the trade mark for which the Opponents sought registration but which was successfully opposed by the Applicant, see [2019] ATMO 111.

20.   While I accept that the Opponents’ use of this logo on some of its documents might be said to constitute trade mark use, none of the annexures to either Rogalsky declaration exhibit its use, or the use of ‘UBER’, by the Opponents any earlier than September 2015. While this use precedes the relevant date, even if it could be said to constitute trade mark use, it does not precede the first identified use of the Trade Mark by the Applicant. The exhibits to the Walsh declaration demonstrate the Applicant’s business name and incorporation dates in 2008 and, pertinently, its use of ‘UBER’ and ‘UBER Constructions’ on signage, awards, publicity materials and invoices from that around that date and beyond. While I note that this latter use includes the word “Constructions”, given it is purely descriptive of the services provided under the Trade Mark, I am satisfied that it constitutes use of the Trade Mark with additions or alterations that do not substantially affect its identity ( s 7(1)).[6]

[6] As previously noted, the Applicant owns registered Australian trade mark 1737418 for ‘Uber Constructions’ for the same services, the filing date of which was 13 November 2015. This does not detract from the finding of Trade Mark use.

21.   Given the Applicant’s earlier Trade Mark use, I am not satisfied that the Opponents have demonstrated prior use of ‘UBER’ as a trade mark such as to defeat the Applicant’s claim to ownership of the Trade Mark.

22. It follows that the Opponents have not established the s 58 ground of opposition.

Section 60

23. Section 60 provides as follows:

Trade mark similar to trade mark that has acquired a reputation in Australia

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.

Note:          For priority date see section 12.

24. Therefore, to establish the s.60 ground of opposition, an opponent must demonstrate that, at the relevant date, there was another trade mark that had acquired a reputation in Australia and because of that reputation, use of the trade mark sought to be registered would be likely to deceive or cause confusion.

25.   The Opponents’ SGP particulars relevantly provide revenue figures for 2015/16 and 2016/17 and claim as follows:

The Uber Builders & Developers trade mark is well known in the market place. I have developed a good reputation as evidenced by turnover. I use the trade mark to promote and market my building and construction business. Further to this the Uber Constructions Australia trade mark is well known in the market place. I have developed a good reputation as evidenced by turnover through my other company Uber Builders and Developers Pty Ltd that increases annually. I use the trade mark to promote and market my building and construction business… If there is a conflict in the market place with respect to the word Uber then I respectfully suggest that may benefit the conflicting trademarks owner. My use of the word Uber in the context of building and development is significant.

Reputation

26.   Kenny J’s remarks in McCormick & Co Inc v McCormick[7] in relation to s.60 and the measurement of reputation are relevant in this respect:

In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.

[7] (2000) 51 IPR 102; [2000] AIPC 91-637; [2000] FCA 1335 [127]

27.   In addition, the reputation required to be demonstrated must be one of which a considerable number of people in the relevant market would be aware.[8]

[8] Renaud Cointreau v Cordon Bleu International Ltd [2001] FCA 1170 [75].

28.   The second Rogalsky declaration describes the Opponents as ‘a high volume construction company that has been in continuous operation since its incorporation.’ The earliest incorporation date of the two companies involved was 25 May 2015, approximately 12 months prior to the relevant date (29 June 2016). The earliest use of the Opponents’ mark in the evidence was on a September 2015 purchase order. While dates on the several purchase orders and contracts precede the relevant date, they relate to one building project in Carnegie. The evidence of the Opponents’ other projects post-date the relevant date. The Opponents’ website was not ‘live’ until after the relevant date. The signage said to demonstrate promotion activities does not use the Opponents’ mark. Other than the 2015 purchase orders and contracts related to the single project in Carnegie, there is no objective evidence of advertising and promotion, sales or revenue under or by reference to the Opponents’ mark prior to the relevant date.

29.   While I accept that the Opponents may have been developing a reputation in the building and construction market at the relevant date, it falls short of establishing that the Opponents’ mark was one of which a significant number of people in the market were aware at the relevant date.

30. It follows that I am not satisfied that at the relevant date the Opponents’ mark had acquired a reputation sufficient to enliven s 60(a). In the circumstances it is unnecessary to consider s 60(b).

31. The Opponents have failed to establish the s 60 ground of opposition.

Decision

32. Section 55 of the Act relevantly provides:

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.

33.   The Opponents have failed to establish any ground of opposition nominated in the SGP.

34.   This Application may proceed to registration after one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or a court so orders.

Costs

35.   As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995 (Cth).

Mary-Ann Cooper

Hearing Officer

Oppositions and Hearings

Trade Marks and Designs

16 April 2020