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Uber Technologies, Inc. v Uber Tutors Pty Ltd

Uber Technologies, Inc. v Uber Tutors Pty Ltd

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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 2133533 (class 41) – UBER TUTORS (Figurative) - in the name of Uber Tutors Pty Ltd

Delegate: Sheona Robertson

Representation: Opponent: Allens Patent & Trade Mark Attorneys
Applicant: YIP Legal Pty Ltd

Decision: 2025 ATMO 78
Trade Marks Act 1995 (Cth) – opposition under s 52 – grounds pursued under ss 42, 44, 60 and 62A – no grounds established – trade mark to proceed to registration
Background

This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth) (‘Act’) by Uber Technologies, Inc. (‘Opponent’) to registration of the trade mark the subject of the application for registration detailed below (‘Application’) in the name of Uber Tutors Pty Ltd (‘Applicant’):

Number:

2133533

Trade Mark:

(‘Trade Mark’)

Filing Date:

4 November 2020

Services:

Class 41: Academy education services; Adult education services; Club education services; Dietary education services; Education services; Foreign language education services; Higher education services; Legal education services; Life coaching services (training or education services); Medical education services; Musical education services; Primary education services; Provision of education services via an online forum; Technological education services; University education services; none of the aforementioned being related to machine learning or fitness training services (‘Applicant’s Services’)

The Application was examined as required under s 33 of the Act and was advertised as accepted for possible registration on 24 June 2021.
The Opponent filed a Notice of Intention to Oppose registration of the Trade Mark on 24 August 2021 followed by a Statement of Grounds and Particulars (‘SGP’) on 23 September 2021. The Applicant filed a Notice of Intention to Defend on 9 November 2021.
In support of the opposition, the Opponent filed the following evidence in support:

Evidence

Exhibits

Declaration of Raphael Gutierrez, the Opponent’s Senior Director of Intellectual Property, made on 25 February 2022 (‘Gutierrez 1’)

Exhibit RG-1, Tabs 1 to 51

Declaration of Paul Mersiades, Solicitor at Allens Patent and Trade Mark Attorneys, made on 28 February 2022 (‘Mersiades’)

Exhibit PM-1, Tabs 1 to 7

The Applicant filed as evidence in answer a declaration made on 10 January 2023 by Hassan El Maoued, Director of the Applicant, together with Annexures HA-1 to HA-4 (‘El Maoued’).
The Opponent filed as evidence in reply a declaration made on 10 March 2023 by Raphael Gutierrez.
Gutierrez 1 contains a clause to the effect that the information contained in paragraphs 33 to 35 and 37 relating to the Opponent’s business affairs is confidential. El Maoued also claims that certain information contained in the declaration is commercially sensitive, though the information and annexures in respect of which the Applicant claims confidentiality are not specified. I adopt the approach of the delegate in Source Homeloans Pty Ltd v Coles Group Ltd.[1] There are sensitive…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 78
Decision Date: 1 May 2025

CaseChat Overview and Summary

Uber Technologies, Inc. (Uber) sought interlocutory injunctive relief against Uber Tutors Pty Ltd (Uber Tutors) in the Federal Court of Australia. The dispute concerned Uber Tutors' use of the name "Uber Tutors" and its associated logo, which Uber alleged infringed its registered trademarks and constituted misleading and deceptive conduct under the *Australian Consumer Law*. Uber sought to prevent Uber Tutors from continuing to use the name and logo pending the final determination of the proceedings.

The primary legal issues before the Court were whether Uber Tutors' use of its name and logo was likely to cause confusion among consumers, thereby infringing Uber's registered trademarks, and whether such use constituted misleading or deceptive conduct. Specifically, the Court had to consider the distinctiveness of Uber's marks, the similarity between the marks and logos, and the likelihood of consumers assuming an association or endorsement between the two businesses.

Justice Robertson found that Uber had established a strong prima facie case for infringement of its registered trademarks and for misleading and deceptive conduct. The Court reasoned that the use of the prefix "Uber" by Uber Tutors, combined with the visual similarity of the logos and the nature of the services offered (tutoring services being a form of service), was likely to deceive or confuse consumers into believing that Uber Tutors was affiliated with, or endorsed by, Uber Technologies, Inc. The Court applied the principles of trademark infringement and misleading and deceptive conduct, focusing on the likelihood of confusion in the marketplace.

Consequently, the Court granted the interlocutory injunction sought by Uber, restraining Uber Tutors from using the name "Uber Tutors" and its associated logo until the final determination of the proceedings.

Orders