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

Uber Builders & Developers Pty. Ltd. and Uber Constructions Australia Pty. Ltd. (the Opponents) opposed the registration of the trade mark "UBER" in Class 37 by Uber Constructions Pty. Ltd. (the Applicant). The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth), with grounds raised under sections 58 and 60 of the Act. The decision was made by a delegate of the Registrar of Trade Marks based on the written record, as neither party requested a hearing.

The legal issues before the delegate were whether the Applicant was the owner of the trade mark within the meaning of section 58, and whether the trade mark, by reason of the reputation of another trade mark, was likely to deceive or cause confusion under section 60. For section 58, the Opponents needed to demonstrate they had an earlier claim to ownership based on prior use of an identical or substantially identical mark. For section 60, the Opponents were required to show that another trade mark had acquired a reputation in Australia before the priority date of the Applicant's application, and that the use of the Applicant's mark would likely cause deception or confusion due to that reputation.

The delegate found that the Opponents had not established the ground under section 58. While the Opponents presented evidence of their use of a logo incorporating "UBER" from September 2015, this use did not pre-date the Applicant's demonstrable use of "UBER" and "UBER Constructions" in its business, which commenced around 2008. The delegate also found that the Opponents had not established the ground under section 60. The evidence did not demonstrate that the Opponents' mark had acquired a reputation in Australia among a significant number of people in the relevant market by the priority date of the Applicant's application. Consequently, the opposition was dismissed, and the trade mark application was allowed to proceed to registration. The Opponents were also ordered to pay the Applicant's costs.