Uber Technologies, Inc. v Uber Tutors Pty Ltd
[2025] ATMO 78
•1 May 2025
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 LtdDecision: 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 registrationBackground
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 commercial matters in each declaration which I will not discuss in any detail in my reasoning. However, I will discuss the evidence to the degree necessary to provide sensible reasons for my decision.
[1] [2008] ATMO 17 (Hearing Officer Thompson).
Once the time allowed for filing evidence ended, the parties were given an opportunity to request a hearing. The Applicant filed a request to be heard on 2 May 2023. The Opponent filed a request for an oral hearing on 5 May 2023. The Opponent initially filed written submissions on 2 April 2024 which were subsequently re-filed on 16 January 2025 following a cooling-off period (‘Opponent’s Submissions’). The Applicant initially filed written submissions on 9 April 2024 which were subsequently re-filed on 23 January 2025.
After the cooling-off period, the matter was heard by video conference on 30 January 2025. At the hearing, Andrew Petale of YIP Legal Pty Ltd appeared for the Applicant and Miriam Stiel of Allens Patent and Trade Mark Attorneys appeared for the Opponent.
As a delegate of the Registrar of Trade Marks (‘Registrar’), I have decided this matter as required by s 55 of the Act. In doing so I take account of the aforementioned materials and the written and oral submissions of the parties.
Grounds of opposition, onus and standard of proof
The SGP nominated grounds of opposition under ss 42(b), 44[2], 60 and 62A of the Act.
[2] For this ground of opposition, the Opponent relies on two international trade mark registrations which are protected in Australia. Accordingly, the technical ground of opposition is under reg 4.15A of the Trade Marks Regulations 1995 (Cth) rather than s 44. However, since the terms of s 44 and reg 4.15A are substantively identical for all relevant purposes, and given the parties have framed their submissions in terms of s 44, I have retained the reference to s 44 in this decision. References to s 44 in this decision should be read as reg 4.15A.
The Opponent bears the onus of establishing at least one of the nominated grounds of opposition.[3] The standard of proof is the ordinary civil standard on the balance of probabilities.[4] The date at which the rights of the parties are to be determined is 4 November 2020 (‘Relevant Date’), being both the filing date and priority date of the Trade Mark.
Evidence
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).
[4] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).
The Opponent
The Opponent first began offering a mobile software application that allows users to obtain, and driver partners to provide, on-demand, location-based transportation and delivery services in 2010. The Opponent was initially known as ‘UberCab’ but this name was replaced in October 2010, at which time the Opponent first used the word mark ‘UBER’ in the United States of America. From 2011 the Opponent began to expand internationally and today it offers its ‘UBER’ goods and services in 71 countries around the world, including in Australia.
The Opponent is the owner of several trade marks in Australia which have priority dates earlier than the Relevant Date. Details of these trade marks are provided as Annexure 1 to this decision. The Opponent is also the owner of trade marks that post-date the Relevant Date, which it is not necessary to list.
The Opponent claims use of the ‘UBER’ word mark (‘Opponent’s Word Mark’) since 2010, as well as use of stylised trade marks featuring the word ‘Uber’ since at least 2011, including the following:
(‘Opponent’s Device Marks’)
(‘Opponent’s Capitalised Device’)
A reference to ‘Opponent’s Trade Marks’ in this decision is a reference to the Opponent’s Word Mark, the Opponent’s Device Marks, the Opponent’s Capitalised Device and the trade marks listed in Annexure 1.
The Opponent has used and promoted the Opponent’s Trade Marks in Australia in the following ways:
·Sponsorship of sports and cultural events including the Melbourne Cup 2016 to 2019, the NRL Grand Final 2017, the AFL Grand Final 2017, Brisbane Festival 2017, Ekka Carnival 2017, Tropfest 2017, the 2018 and 2019 Australian Grand Prix, Adelaide Fringe Festival 2018, and Australian Tennis Open in 2019 and 2022. The Opponent would occasionally run competitions coinciding with these events;
·Television advertisements. The dates of publication and viewership figures (being in excess of 9.47 million Australians) for two example advertisements are provided;
·Promotional campaigns such as the ‘Ask Sam’ campaign in July/August 2017, the ‘Tonight, I’ll be eating…’ Uber Eats campaign in November 2017, and the ‘This Calls For…’ campaign launched in November 2021;
·Promotional campaigns in collaboration with other businesses, such as McDonalds, the AFL, OzHarvest, M&M’s, and Woolworths Group;
·Advertisements on billboards, bus stops, and the side of buses;
·Monthly newsletters and emails sent to users of the Uber Rides app in Australia;
·Online via ‘ (‘Opponent’s Website’). Web traffic data for consumers in Australia for the years 2017 to 2020 and archived screenshots of the Opponent’s Website between June 2011 and June 2020 are provided in Gutierrez 1;
·Social media platforms including X (formerly Twitter), Facebook, Instagram, YouTube and LinkedIn.
·Third party websites and publications. A selection of articles is provided in Gutierrez 1.
Gutierrez 1 contains the following examples of use and promotion of the Opponent’s Device Marks or similar black and white device marks:
·Archived screenshots of the Opponent’s Website dated October 2012 and August 2013.
·Screenshots from the Apple App Store and Google Play store for the Opponent’s Uber Rides software application (‘Rides App’).
·An undated archived screenshot from the Opponent’s Australian Twitter account.
·An archived screenshot dated March 2017 from the Opponent’s Instagram account. As of the date of the screenshot, the account had 498,000 followers.
·Screenshots from the Opponent’s Facebook account dated December 2021 featuring one of the Opponent’s Device Marks as its profile picture. It is not clear when the screenshots were obtained but at that stage the account had more than 22 million followers.
·Archived screenshots of the Opponent’s YouTube account dated October 2017 featuring the Opponent’s Capitalised Device as the account’s profile picture.
·An undated screenshot of the Opponent’s LinkedIn account. At the time the screenshot was obtained, the account had more than 2.1 million followers.
·A photograph of a sticker bearing one of the Opponent’s Device Marks affixed to the windscreen of a car.
Gutierrez 1 contains figures pertaining to the Opponent’s gross bookings and global revenue, which I note are impressive. In the 2019 fiscal year the Opponent had more than 6.9 billion trips worldwide, $65 billion in gross global bookings and $14.1 billion in global revenue.[5] According to the data provided, most bookings were for rides and meal deliveries. Between June 2014 and July 2015 the valuation of the Opponent increased from $18.2 billion to $51 billion.[6]
[5] Gutierrez 1, [17].
[6] Gutierrez 1, Tab 4 of Exhibit RG-1.
The Opponent commenced use of the Opponent’s Trade Marks in Australia in at least 2012. Australian consumers access the services offered by driver partners by way of the Rides App. Driver partners in Australia offer their services to consumers in Australia by way of the Uber Driver software application (‘Driver App’). Both applications have used one of the Opponent’s Device Marks as their main icon since at least November 2019. By the Relevant Date, the Rides App had been downloaded over 12 million times by consumers in Australia.
Within the Rides App and/or Driver App the Opponent offers several features to the Australian market which have names that include ‘Uber’ as a prefix, such as ‘UBERX’, ‘UBER COMFORT’, ‘UBER ASSIST’, ‘UBER PREMIER’, ‘UBERXL’, ‘UBER CONNECT’, ‘UBER PASS’, ‘UBER RESERVE’ and ‘UBER PET’.
Globally, the Opponent has offered an extended portfolio of services under the Opponent’s Trade Marks since 2014. Examples provided in Gutierrez 1 include ‘UBER EATS’ (a food and grocery ordering and delivery service); ‘UBER FREIGHT’ (a logistics service matching truck drivers with cargo); ‘UBER RENT’ (a car rental service); ‘UberHEALTH’ (a partnership offering a flu shot program in the United States of America); ‘UBER PRESENTS’ (a film series published on the Opponent’s YouTube channel highlighting the stories of driver partners and couriers); ‘UBER ELEVATE’ (an annual summit hosted by the Opponent since 2017 bringing together aviation leaders from across industry, government and academia); ‘UBER AIR’ (an aerial ridesharing service); ‘Uber Direct’ (for placing delivery orders direct from select retailers, available in Australia since April 2020); ‘Uber Pass’ (a membership program with rewards such as discounted delivery or rides); and ‘Uber AI Labs’ (a start-up for research on artificial intelligence and machine learning).
Australian consumers access the Opponent’s ‘UBER EATS’ services by way of the Uber Eats software application (‘Uber Eats App’). By the Relevant Date the Uber Eats App had been downloaded over 14 million times by consumers in Australia.
The Opponent has been engaged in partnerships for the following educational opportunities and resources for driver partners and/or users of the Uber platform:
·Rosetta Stone: a partnership offering free language lessons through the Uber Driver app.
·Arizona State University: a partnership offering the Opponent’s driver partners and their families free tuition for ASU’s online bachelor degree programs.
·The Open University: a partnership allowing eligible driver partners the opportunity to study with the British public research university.
·United Nations Educational, Scientific and Cultural Organisation: a partnership offering rides to and from vaccination appointments for teachers, and delivery of meals and food parcels.
·GetSetUp: the Opponent has co-created classes on the Opponent’s products and services with this interactive learning platform for older adults.
·‘Uber Avanza’, an educational platform designed to train driver partners in entrepreneurship.
Gutierrez 1 encloses a number of decisions from foreign Intellectual Property Offices which confirm the status of, at least, the Opponent’s Word Mark as a well-known mark. The Opponent submits that the well-known status of the Opponent’s Trade Marks is confirmed by the Opponent’s presence in reports from brand consultancy companies Interbrand, BrandFinance, Brandz, and Netbase Quid which rank UBER as one of the top 100 global brands between 2019 and 2021.
The Applicant
El Maoued is brief and provides little information about the Applicant. Much of El Maoued is in the nature of submissions, which it is not necessary to discuss at this stage.
As at the date of El Maoued, the Applicant was in the process of developing a web-based portal where tutors are able to connect with students from across the world to provide tutoring services in a range of different fields and study areas.
Mersiades contains:
·printouts from the Applicant’s social media accounts on LinkedIn, Instagram, Facebook, X formerly Twitter, YouTube and TikTok;
·a screenshot of the Applicant’s website < list of business names registered to the Applicant.
It is declared in El Maoued that the Applicant’s name was selected on the basis that “uber” is a German word that translates in English to “over, above or beyond” in English indicating that the Applicant’s tutoring services exceed the standards of competing tutoring businesses.
El Maoued explains the Trade Mark, which “depicts a stylised letter U resembling a tutor or teacher wearing a formal dress with tie and glasses”,[7] was so chosen to reinforce the association between the Trade Mark and the Applicant’s Services.
Discussion
[7] El Maoued, [7].
Section 60
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.
To succeed on this ground of opposition the Opponent must establish both of the following factors:
(i)as at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market; and
(ii)because of that reputation, use of the Trade Mark would be likely to deceive or cause confusion.
The particulars of the s 60 ground of opposition in the SGP may be summarised as follows. The Opponent has provided “on-demand, location-based transportation, delivery, and other services” under the Opponent’s Trade Marks since at least 2010, and in Australia since at least 2012, being well before the Relevant Date. As a result of this extensive use, the Opponent’s Trade Marks have garnered a reputation in Australia, and the prefix ‘Uber’ is now synonymous with the Opponent. Because of this reputation, consumers perceiving the Trade Mark would assume that the associated services emanate from the Opponent.
I will first consider whether any of the Opponent’s Trade Marks had acquired a reputation in Australia as at the Relevant Date.
Reputation
In McCormick & Co Inc v McCormick,[8] Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour considered the definition provided in the Macquarie Dictionary and concluded that reputation is ‘the recognition of the [trade mark] by the public generally’.[9] Reputation cannot be assumed; it must be established as a matter of fact by the Opponent.[10]
[8] [2000] FCA 1335 (‘McCormick’).
[9] Ibid [81].
[10] ConAgra Inc v McCain Foods (Australia) Pty Ltd [1992] FCA 159, [77] (Lockhart J) (‘ConAgra’).
In Rodney Jane Racing Pty Ltd v Monster Energy Company, O’Bryan J observed that:
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.[11]
[11] [2019] FCA 923, [83].
The reputation relied upon by the Opponent must be amongst a significant or substantial number of persons in the relevant market.[12] In Le Cordon Bleu BV v Cordon Bleu International Ltee, Heerey J observed that what amounts to a significant or substantial amount of people will depend on the nature of the goods or services in question.[13]
[12] Renaud Cointreau & Cie v Cordon Bleu International Ltee[2001] FCA 1170, [75] (Moore, Tamberlin and Goldberg JJ).
[13] [2000] FCA 1587, [91].
The existence of a reputation in Australia may be established by a variety of means including advertisements within Australia, constancy of travel between other jurisdictions and Australia, or exposure of people within Australia to the goods or services of an overseas owner. [14]
[14] ConAgra (n 9) [118], cited with approval by Kenny J in McCormick.
The Opponent submits that the reputation of the Opponent’s Trade Marks is evident from the following indicia:
·the Opponent’s extensive global and Australian trade mark portfolios, many of which consist of or contain the word ‘Uber’;
·the global expansion of the Opponent’s rideshare applications and related services;
·use of the Opponent’s Capitalised Device on the Opponent’s Website since around August 2013 and the Opponent’s Device Marks on social media from around September 2018;
·the access to the Opponent’s Website by several million Australian consumers annually;
·the Opponent’s extensive sponsorships, promotional campaigns, partnerships and publicity on third party websites or media outlets;
·the Opponent’s significant financial metrics;
·the Opponent’s promotional and marketing expenditure in relation to services provided under the ‘Uber’ brand, which had exceeded $US1 billion by February 2022;
·the millions of downloads of the Rides App and Driver App before the Relevant Date;
·the recognition of the Opponent’s ‘UBER’ brand as one of the top global brands by several brand consultancy companies.[15]
[15] Gutierrez 1, Tab 51 of Exhibit RG-1.
The Opponent further submits that the recognition of the Opponent’s fame by foreign intellectual property offices “supports and enhances [the Opponent’s] reputation in the Australia [sic] market as part of its global business, particularly having regard to the impact of mass advertising, the international mobility of the world population and the global and instantaneous reach of the internet and other online platforms through which [the Opponent] promotes its business”.[16]
[16] Opponent’s Submissions, [55].
The Applicant concedes that the evidence establishes that the Opponent’s Word Mark is a well-known and recognisable brand in respect of rideshare and delivery services.
I am satisfied that the Opponent had, before the Relevant Date, acquired a significant reputation in the market in the Opponent’s Word Mark and the Opponent’s Capitalised Device in respect of transport and delivery services. The Opponent’s reputation may be inferred based on the duration and extent of use of these trade marks in Australia and other jurisdictions, as well as extensive and well publicised promotion, substantial downloads of the Rides App and the Uber Eats App, rapid global expansion, and high valuations of the Opponent’s business. Based on the evidence, I am also satisfied that the Opponent had, by the Relevant Date, built a reputation in the trade mark ‘UberEats’.
However, there is insufficient evidence to establish that the remainder of the Opponent’s Trade Marks had been used to such an extent that they would have acquired a reputation as at the Relevant Date. In particular, I note the Opponent commenced use of the Opponent’s Device Marks in Australia in or around September 2018, being less than two years before the Relevant Date, and that evidence of use of the Opponent’s Device Marks is largely undated or dated after the Relevant Date.
In respect of the Opponent’s contention that that its use of ‘UBER’ as a prefix in many of the Opponent’s Trade Marks has resulted in ‘UBER’ becoming synonymous with the Opponent, the Applicant notes that the Opponent’s Trade Marks that include ‘UBER’ as a prefix are either:
·variations or tiers of the Opponent’s ridesharing services (e.g. ‘UBERX’);
·features associated with the Opponent’s transport or delivery services (e.g. ‘UBER PASS’);
·features not available to consumers in the Australian market (e.g. ‘UBER GREEN’);
·allusions to goods which can be delivered (e.g. ‘UBER EATS’);
·short-term uses for promotional purposes; or
·available only after the Relevant Date.
I agree that the Opponent’s evidence of use of ‘UBER’ as a prefix suffers the above limitations. The evidence shows that the Opponent has a long-standing practice of using ‘UBER’ as a prefix in conjunction with words that bear no obvious connection to transport or delivery services. Gutierrez 1 contains numerous examples of hashtags used on the Opponent’s Australian then Twitter account using ‘UBER’ as a prefix, such as ‘#UBERFRINGE’, ‘#uberVINO’, ‘#UberMUMS’, ‘#UberRedCrossShops’, ‘#UberUMPIRE’, ‘#UberIceCream’, ‘#UberSafe’, and ‘#UberKITTENS’. When considered together with the Opponent’s extended portfolio of services discussed in paragraphs 21 and 22 above, the Opponent clearly engages in brand extension by using ‘UBER’ as a prefix in a variety of trade marks. However, with the exception of ‘Uber Eats’, the evidence does not establish that there was, at the Relevant Date, a sufficient reputation in any trade mark that incorporates ‘UBER’ as a prefix.
Section 60 does not require that another trade mark has acquired a reputation that is specific to the goods or services the subject of the opposed application.[17] However, there is more likely to be confusion where there is a nexus or connection between the respective goods or services, or if consumers would regard the goods or services of the subject application as being a natural or logical extension of the goods or services in which the other trade mark’s reputation lies.[18] It is possible that a trade mark’s reputation might be so strong that confusion or deception would be likely even where little nexus exists between the respective trade marks or the relevant goods or services.[19]
[17] Qantas Airways Limited v Edwards [2016] FCA 729, [143] (Yates J); Chubpak Australia Pty Ltd v Aristopet Pty Ltd [1999] ATMO 71 (Delegate Edlington).
[18] Aussie Home Loans Ltd v Aussie Loans Pty Ltd [2006] ATMO 75, [34] (Delegate Thompson) (‘Aussie Home Loans’).
[19] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40] (Delegate Thompson) (‘Pottle Productions’); Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, [39]-[40] (Delegate Lyons).
The Opponent contends that the Opponent’s reputation is not limited to rideshare and delivery services but extends to multiple areas of business activity,[20] including the Applicant’s Services. The Opponent has demonstrated that it has partnerships with providers of a wide array of goods and services, including education services, such as the partnerships described in paragraph 24 of this decision. The Opponent argues that consumers familiar with the Opponent’s ‘UBER’ brand would consider education services to be a logical extension of the services offered by the Opponent under the Opponent’s Trade Marks.
[20] Aussie Home Loans (n 17) [34]; Automobiles Peugeot v Viva Time Corporation (2001) 54 IPR 568, 582 (Delegate Thompson).
The Applicant does not accept that the Opponent’s reputation extends to the provision of education services. It is the Applicant’s position that the Opponent does not enjoy an exclusive monopoly with respect to the word ‘UBER’ in any field of commercial activity other than vehicular transport and delivery services. The Applicant points to the following deficiencies in the Opponent’s evidence of its provision of education services as listed in paragraph 24 of this decision:
· there is no indication that the Opponent has itself offered education services, as opposed to merely funding the services provided by a third party;
· there is no indication that the education services provided by the Opponent’s partners were provided under the Opponent’s ‘Uber’ brand;
· there is no evidence that these partnership services were offered to the Opponent’s drivers or delivery workers in Australia;
· the evidence pertaining to two of these partnerships is dated after the Relevant Date, and cannot therefore substantiate the Opponent’s provision of, or reputation in, such services as at the Relevant Date.
I agree that the evidence does not establish that the reputation of the Opponent’s Word Mark, ‘UberEats’ or the Opponent’s Capitalised Device extended to education services in class 41 as of the Relevant Date, for the reasons provided above. The reputation of these marks is primarily in respect of transport and delivery services. I do not consider there are sufficient trade connections between transport and delivery services and the Applicant’s Services, and I am not persuaded that the reputation of either the Opponent’s Word Mark, ‘UberEats’ or the Opponent’s Capitalised Device is sufficient to bridge the substantial differences between these respective services.
It remains for me to determine whether, because of the reputation of the Opponent’s Word Mark, ‘UberEats’ and/or the Opponent’s Capitalised Device, use of the Trade Mark would be likely to deceive or cause confusion.
Likelihood of deception or confusion
The likelihood of deception or confusion from the use of the opposed mark must arise because of the reputation of the other mark.[21]
[21] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd (2015) 115 IPR 82, [27] (Jessup J).
The assessment of the likelihood of deception or confusion is to be made with regard to the strength of the reputation of the relevant trade marks of the Opponent, the inherent distinctiveness of the respective trade marks and the degree of similarity between them, and the degree of connection between the respective goods and services.[22]
[22] Pottle Productions (n 18) [40].
The threshold for confusion is not high, although a mere possibility of confusion is not enough.[23] There must be a real and tangible danger of confusion or deception. It is enough if the ordinary person entertains a reasonable doubt.[24]
[23] Australian Postal Corporationv Digital Post Australia [2013] FCAFC 153, [70] (North, Middleton and Barker JJ).
[24] Southern Cross Refrigerating v Toowoomba Foundry Proprietary Limited (1954) 91 CLR 592, 595 (Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ) (‘Southern Cross’); Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, [76] (Moore, Sackville and Emmett JJ).
The Opponent has framed the likelihood of confusion or deception around the similarities between the representation of the Opponent’s Device Marks and the Trade Mark. As I have already determined that the Opponent’s Device Marks did not have sufficient reputation in the Australian market as at the Relevant Date, it is not necessary for me to determine whether the visual similarities between the Opponent’s Device Marks and the Trade Mark are likely to give rise to confusion. I need only consider whether there are sufficient similarities between the Trade Mark and the Opponent’s Word Mark, the Opponent’s Capitalised Device or ‘UberEats’ that use of the Trade Mark would be likely to deceive or cause confusion.
The Opponent contends the ‘UBER’ element of the Trade Mark is dominant, as the word ‘TUTORS’ is purely descriptive and the graphic element is less prominent. Although the Opponent’s submissions were centered on the similarities between the Trade Mark and the Opponent’s Device Marks, I note the Opponent’s arguments regarding the shared word ‘UBER’ and white lettering against a black background are relevant also to the Opponent’s Capitalised Device. The Opponent submits that the risk of deception or confusion is amplified because of the Opponent’s use of a family of trade marks, all of which are constructed around the word ‘UBER’, and because the Trade Mark incorporates the word ‘UBER’ as an essential and distinguishing feature.
The Applicant notes that the Opponent’s Trade Marks include representations in a variety of formats, including use of colour, different fonts and different combinations of uppercase and lowercase letters. According to the Applicant, in circumstances where the Opponent’s Trade Marks include many inconsistent representations, the Opponent cannot claim exclusivity with respect to the representation of the Opponent’s Device Marks. The Applicant further notes that the Trade Mark contains several distinctive components, such as the graphic element and the word ‘TUTORS’ presented in a contrasting font and capitalisation.
El Maoued contains an extensive list of trade marks registered to third parties on the Australian Trade Marks Register which feature the prefix ‘UBER’. The Applicant submits that as there are many brands in Australia which utilise the term ‘UBER’ in respect of a wide variety of goods and services, consumers would be capable of distinguishing the Opponent from other traders and would understand that the name ‘UBER’ used outside of the Opponent’s core areas of commercial activity is not necessarily associated with the Opponent.
There are limited visual similarities between the Trade Mark and the Opponent’s Capitalised Device. Both marks are represented with white lettering against a black background, but as noted by the Applicant, the Trade Mark does not include any endorsement or limitation as to specific colours. The only additional similarity between these trade marks is the shared word ‘UBER’. Similarly, the only shared feature between the Opponent’s Word Mark, ‘UberEats’ and the Trade Mark is the word ‘UBER’. I consider the word ‘UBER’ to have a well understood meaning in Australia, being in ordinary English a synonym for ‘outstanding’ or ‘super’, and the German word ‘ÜBER’ would generally be understood by Australian consumers to have a similar meaning. The Applicant has provided evidence that use of the terms ‘UBER’ and ‘ÜBER’ are relatively common amongst traders in a wide variety of industries. Where there is evidence of trade marks containing a common term being owned by different proprietors, the chance of confusion is lessened.[25]
[25] The Scotch Whisky Association v Marlon Dewitt and John Tormey [2006] ATMO 43, [10] (Delegate O’Brien).
The additional word ‘TUTORS’ in the Trade Mark is descriptive in the context of the Applicant’s Services, and accordingly it ought to be afforded diminished weight in a comparison of the respective trade marks. However, when the Trade Mark is considered as a whole, it contains numerous additional elements that are entirely absent from the trade marks in which the Opponent has established a reputation, including a distinctive graphic element which doubles as a stylised letter ‘U’ in the word ‘UBER’, stacked words and the additional word ‘TUTORS’. Overall, I am not persuaded that there are sufficient similarities between the Opponent’s Word Mark, the Opponent’s Capitalised Device or ‘UberEats’ and the Trade Mark such that use of the Trade Mark is likely to deceive or cause confusion.
Having regard to the differences in the markets within which each party operates, the lack of a reputation as at the Relevant Date in the Opponent’s Trade Marks with the exception of the Opponent’s Word Mark, ‘Uber Eats’ and the Opponent’s Capitalised Device marks, and the lack of visual and aural similarities between those trade marks and the Trade Mark, I am not satisfied that there is a real tangible likelihood consumers encountering the Trade Mark would be caused to wonder whether the Applicant’s Services are connected with, or endorsed by, the Opponent.
The s 60 ground of opposition is not established.
Section 42
Section 42 of the Act provides:
An application for the registration of a trade mark must be rejected if:
(a) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.It is clear that this ground is being made under s42(b) of the Act. The Opponent bears the onus of establishing that use of the Trade Mark by the Applicant would rather than could be contrary to law on the balance of probabilities.[26]
[26] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [28] (Madgwick J).
The Opponent states in the SGP that, for the same reasons provided in support of the s 60 ground of opposition, the Applicant’s use of the Trade Mark would constitute misleading or deceptive conduct under ss 18 and 29 of the Australian Consumer Law (‘ACL’) which forms Schedule 2 to the Competition and Consumer Act 2010 (Cth), and/or the common law tort of passing off. The Opponent submits that use of the Trade Mark by the Applicant would mislead and deceive consumers given the Opponent’s reputation in its ‘UBER’ trade marks, and/or falsely suggest that the Applicant’s Services are associated with, affiliated with, sponsored by or endorsed by the Opponent.
Australian Consumer Law
Section 18 of the ACL requires that there be a likelihood that the relevant consumer would be misled or deceived as to the origin of the Applicant’s Services due to the conduct of the Applicant. Section 29 of the ACL concerns representations that are false or misleading. The expression ‘mislead or deceive’ in s 18 of the ACL is effectively equivalent to the expression ‘false or misleading’ in s 29 of the ACL.[27]
[27] Australian Competition and Consumer Commission v Coles Supermarkets Australia Pty Ltd [2014] FCA 634, [40] (Allsop CJ).
The test for conduct contravening the ACL is a stricter one than the test under s 60 of the Act,[28] which requires only that consumers would be likely to be deceived or confused. Since I am not satisfied that the s 60 ground of opposition is established, it follows that on the stricter test to be applied under the ACL I am not satisfied that the Applicant’s use of the Trade Mark would be likely to mislead or deceive, or amount to a false or misleading representation under the ACL.
[28] Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ); Monster Energy Company v Mixi Inc [2020] FCA 1398, [33] (Stewart J).
Passing Off
If use of a trade mark does not contravene s 18 of the ACL it will also not constitute the tort of passing off. The relationship between passing off and s 52 of the now repealed Trade Practices Act 1974 (Cth) (‘TPA’) was addressed in Re Equity Access Pty Ltd v Westpac Banking Corporation:
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.[29]
[29] [1989] FCA 520, [40] (Hill J).
Sections 18 and 29 of the ACL are the equivalents of ss 52 and 53 of the TPA.[30] The above comments are equally applicable to the relationship between s 18 of the ACL and the tort of passing off. As I have found that ss 18 and 29 of the ACL have not been contravened, it follows that use of the Trade Mark does not amount to passing off.
[30] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174 [410] (Rangiah J).
The ground of opposition under s 42(b) of the Act is not established.
Section 62A
Section 62A of the Act provides:
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The phrase ‘bad faith’ is not defined in the Act. In the context of s 62A, bad faith does not require dishonesty or fraud, rather ‘it is a wider notion, potentially applicable to diverse species of conduct’[31] not confined to the examples of bad faith given in the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth).
[31] Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81, [164] (Dodds-Streeton J) (‘Fry Consulting’).
In DC Comics v Cheqout Pty Ltd, Bennett J explained:
Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[32]
[32] [2013] FCA 478, [62] (‘DC Comics’).
Conduct that is ‘exploitative and designed to acquire a springboard or advantage’ or of ‘an unscrupulous, underhand or unconscientious character’[33] can amount to conduct that falls short of acceptable commercial standards.[34]
[33] Fry Consulting (n 31) [166].
[34] DC Comics (n 32) [66]-[67].
I must determine what the Applicant knew at the time of making the Application and whether, in light of that knowledge, the Applicant’s conduct fell short of acceptable commercial behaviour.
An allegation of bad faith under s 62A is to be taken seriously. In this regard, I note the following comments of the Registrar’s delegate in Hard Coffee Pty Limited v Hard Coffee Main Beach Pty Limited:
The onus of demonstrating ‘bad faith’ falls squarely on the party making such an allegation with the need for evidence able to fulfil the degree of proof required to satisfy the civil standard of ‘balance of probabilities’. That said, the allegation of ‘bad faith’ is a very serious one and a finding of bad faith should not be taken lightly.[35]
[35] [2009] ATMO 26, [12] (Delegate Nancarrow).
In the SGP, the Opponent cites the Applicant’s use of the Opponent’s trade marks in social media hashtags prior to the Relevant Date. The use in question is a single Instagram post by the Applicant dated 31 May 2020, roughly four months before the Relevant Date, which includes the hashtags ‘#ubereats’ and ‘#uber’ (‘Instagram Post’). The Opponent states this post establishes that the Trade Mark was deliberately chosen to associate the Applicant’s Services with the Opponent. It is stated in the SGP that, owing to the Opponent's reputation and extensive use of the Opponent’s Trade Marks, the Applicant knew, or ought to have known, that seeking registration of the Trade Mark would fall short of acceptable standards of commercial behaviour.
As discussed in relation to the s 60 ground of opposition, the Opponent’s reputation in the Opponent’s Word Mark as a trade mark is well-established and could foreseeably result in a springboard or advantage for the Applicant.
The Opponent notes that the Applicant has not made any express statements denying the Applicant’s awareness of the Opponent’s Trade Marks, denying the Trade Mark was created with an intention to play on the fame of the Opponent’s Trade Marks, or establishing the Applicant’s honest belief that no confusion would arise from the use of the Trade Mark. The Opponent submits that in the absence of such statements an inference may be drawn that the Applicant selected the Trade Mark to associate its services with those of the Opponent.[36]
[36] Opponent’s Submissions, [76].
The Applicant submits that as the placing of a hashtag on an Instagram post has been held not to amount to use as a trade mark,[37] use of hashtags is not indicative of behaviour that is unscrupulous, underhanded or otherwise unconscientious. I do not agree with this position. Behaviour that falls short of acceptable standards for the purposes of s 62A may take many forms and is not limited to use of another trader’s mark ‘as a trade mark’.
[37] Taronga Conservation Society Australia v Sydney Zoo Pty Ltd [2017] ATMO 155 (Delegate Smith).
It is clear from the Instagram Post that, at the time of filing the Application, the Applicant was aware of at least the Opponent’s ‘UberEats’ trade mark. I consider the ‘uber’ hashtag in the Instagram Post may be a reference to the Trade Mark or the common meaning of the word, and is not necessarily a reference to the Opponent or any of the Opponent’s Trade Marks.
I do not consider a single post on a single social media account, of which the hashtag ‘#ubereats’ is but one of many, to be sufficient on its own to indicate behaviour that is unscrupulous, underhand or unconscientious. Mere awareness of the Opponent does not, on its own, indicate that the application for the Trade Mark was made in bad faith. However, awareness or prior dealings can amount to bad faith when combined with other circumstances. The question is whether, in all the particular circumstances, the Applicant’s knowledge was such that the decision to apply for the Trade Mark at the Relevant Date would be regarded as in bad faith by persons adopting the proper standards.[38]
[38] Fry Consulting (n 31) [167].
The Opponent submits that the Applicant also knew, or ought to have known, that the use of ‘UBER’ as a prefix, as well as an upper case ‘U’ and lower case ‘ber’ in white font against a black background, are essential elements of the Opponent’s brand identity. The Opponent acknowledges that the Applicant has provided its reasons for adopting the words ‘UBER TUTORS’ in the Trade Mark, but submits that the absence of any explanation by the Applicant as to its reasons for adopting similar visual features to those for which the Opponent is known is telling. The Applicant’s application to register a trade mark that contains these features is, according to the Opponent, behaviour that falls short of acceptable standards of commercial behaviour.
The Applicant submits that, given the differences between the Applicant’s Services and the Opponent’s Services, the Applicant’s decision to file an application for the Trade Mark was not unreasonable.
The visual similarities between the Opponent’s Device Marks and the Trade Mark may not be purely coincidental. However, the Applicant has explained its reasons for selecting the Trade Mark, and the use of a plain font and monochrome in the Opponent’s Device Marks is by no means unique. There is no indication that the Applicant at any stage recognised the Trade Mark as bearing close similarities to any of the Opponent’s Trade Marks.
Further, as established in respect of the s 60 ground of opposition, at the time the Applicant filed the Application the Opponent’s Device Marks did not have a substantial reputation in the Australian market, and the Opponent’s reputation in respect of trade marks that feature ‘UBER’ as a prefix was limited to ‘UberEats’. Further, the Applicant’s Services are dissimilar to the transport and delivery services with which the Opponent is associated.
The Opponent notes that it is apparent that the Trade Mark is intended to be used in connection with an online platform that allows students to access tutors in a manner that takes advantage of the ‘sharing economy’ in a similar manner to the Opponent’s software applications. In this regard, the Opponent appears to be referring to the tagline on the Applicant’s Instagram account, which reads: “Helping connect students and tutors through our Über Tutors online platform”. Accordingly, it says an inference can be drawn that the Trade Mark was chosen to associate the Applicant’s Services with the Opponent’s on-demand ridesharing business.
The Applicant’s Services make no reference to the provision of services by way of an online platform, nor does the Application include any claim for goods or services with respect to computer software or the provision of information or other services by way of software applications. Having regard to the Application as filed, it is open to the Applicant to provide the Applicant’s Services across a number of different formats. I note that by filing an application to register the Trade Mark in Australia, the Applicant is presumed to have a genuine intention to use the Trade Mark as filed.[39] It is not, in my view, sufficient to rely on a single tagline on one of the Applicant’s social media accounts as evidence that the Applicant filed the Application with the intention of trading off the reputation and goodwill in the Opponent’s software applications.
[39] Aston v Harlee Manufacturing Co. (1960) 103 CLR 391, 401 (Fullagar J).
The evidence before me does not establish that, at the time of filing the application for the Trade Mark, the Applicant had engaged in a pattern of conduct that fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons. In the absence of such evidence, I am not satisfied, on the balance of probabilities, that the application for the Trade Mark was made in bad faith.
The s 62A ground of opposition has not been established.
Section 44
Section 44 of the Act relevantly provides:
(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a) it is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar services or closely related goods; or
(ii) a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b) the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
In the SGP the Opponent states that the Trade Mark is substantially identical with, or deceptively similar to, one or more of the Opponent’s Trade Marks, and covers services which are of the same description as the following two of the Opponent’s Trade Marks (‘Section 44 Marks’):
Number
Trade mark
Goods and services
1950330
(International Registration 1419415)
UBER AI LABS
Class 9: Computer software, namely, software for machine learning
Class 16: Publications, namely, research papers in the field of machine learning
Class 41: Educational services, namely, conferences, summits in the nature of conferences, non- downloadable webinars, tutorials and seminars in the field of machine learning; providing online electronic publications, namely, blogs, non- downloadable technical reports and non-downloadable research papers in the field of machine learning
1881243
(International Registration 1371292)
UBERELEVATE
Class 39: Providing information in the field of transportation via a website
Class 41: Educational services, namely, conferences, summits, and seminars in the field of transportation
To establish the s 44 ground of opposition, the Section 44 Marks must satisfy the following requirements:
(i)be in the name of a person other than the Applicant (‘first requirement’);
(ii)have a priority date which is earlier than the Relevant Date (‘second requirement’);
(iii)be substantially identical with, or deceptively similar to, the Trade Mark (‘third requirement’); and
(iv)it is in respect of goods and/or services which are either similar and/or closely related to the Applicant’s Services (‘fourth requirement’).
The Section 44 Marks are held in the name of the Opponent and have priority dates earlier than the Relevant Date. The first and second requirements are satisfied.
Comparison of services
Section 14 of the Act provides that goods are ‘similar’ to other goods, and services are ‘similar’ to other services, if they are the same, or of the same description, as the other goods or services. The determination of whether goods are similar, or services are similar, involves the consideration of a number of factors including the nature, use and trade channels of the goods or services.[40]
[40] Jellinek’s Application (1946) 63 RPC 59, 64 (Romer J); MID Sydney Pty Ltd v Australian Tourism Co Ltd & Ors [1998] FCA 1616 (Burchett, Sackville and Lehane JJ).
The Opponent submits that the Trade Mark covers various education services which are similar to the education services of the Section 44 Marks. The Applicant does not make any submissions with regard to the similarity between the respective services.
The educational services of trade mark number 1950330 are expressly limited to services in the field of machine learning. Prior to acceptance of the Application for registration, the Applicant’s Services were amended to explicitly exclude education services relating to machine learning. As a consequence of this amendment, the services of trade mark number 1950330 and the Applicant’s Services are not the same. Likewise, the services of trade mark number 1881243 are limited to the field of transportation. However, there remains an overlap between the services of the Section 44 Marks and the Trade Mark given they are each in the nature of educational services and would notionally be used by the same class of consumers and delivered by the same or similar means.
I agree that the Applicant’s Services are of the same description as the services of the Section 44 Marks. The Applicant’s Services contain broad claims for education services which would notionally encompass, or bear significant similarities to, the Opponent’s education services. The fourth requirement is satisfied.
Substantially identical
The relevant test for determining whether trade marks are substantially identical is set out in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’):
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[41]
[41] [1963] HCA 66, [12] (Windeyer J) (‘Shell’).
The Opponent does not submit that the Trade Mark and the Section 44 Marks are substantially identical. For completeness, I do not find the Trade Mark to be substantially identical to either of the Section 44 Marks. On a side-by-side comparison of the respective marks there are obvious differences resulting in a total impression of dissimilarity, namely, the device features of the Trade Mark, and the additional word ‘TUTORS’ in the Trade Mark and ‘ELEVATE’ and ‘AI LABS’ in the Section 44 Marks. The next question is whether the Trade Mark is deceptively similar to either of the Section 44 Marks.
Deceptively similar
100. Section 10 of the Act defines “deceptively similar” as follows:
a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
101. In Shell, Windeyer J provided the following insights on deceptive similarity:
The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s [trade mark].[42]
[42] Ibid [13].
102. In Clark v Sharp it was noted:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[43]
[43] (1898) 15 RPC 141, 146 (Byrne J).
103. The question to be considered is whether the similarity gives rise to a real and tangible risk of confusion. In Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd (No 2), O’Bryan J stated:
That question is not answered simply by observing the degree of similarity (in the sense of the number of common words in the marks), but by considering the effect of the similarity. Attention must be given to the impression produced by the entirety of the marks, recognising that one word or feature of a mark can be more striking and memorable than another.[44]
[44] [2021] FCA 328, [245].
104. In Tivo Inc v Vivo International Corporation Pty Ltd, Dodds-Streeton J said:
The cases are not entirely consistent in relation to whether, and if so, which parts of words are more likely to be slurred, emphasised or misheard, and much appears to depend on the particular circumstances of, and the evidence led in, individual cases.[45]
[45] [2012] FCA 252, [163].
105. In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd, Kitto J made the following comments regarding the risk of deception or confusion:
While a mere possibility of confusion is not enough - for there must be a real, tangible danger of its occurring - it is sufficient if the result of the user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products come from the same source. It is enough if the ordinary person entertains a reasonable doubt.[46]
[46] Southern Cross (n 23) 594 (citations omitted).
106. The notional buyer does not possess any knowledge about actual use of the prior marks, the actual business of the owner of the prior marks, the goods produced by the owner of the prior marks, any distinctiveness acquired through use of the prior marks, or any reputation associated with the prior marks.[47]
[47] C A Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, 62 [43] (Ryan, Branson and Lehane JJ).
107. The Opponent submits that the essential feature of both the Trade Mark and the Section 44 Marks is the first word ‘UBER’, such that, taking into account the doctrine of imperfect recollection, the general impression left by the respective marks is one of resemblance. The Opponent cites several decisions in which a trade mark that takes a prominent and distinctive feature of an earlier mark has been found to be deceptively similar to the earlier mark. [48] The Applicant similarly cited a number of decisions in which the marks in question were held not to be deceptively similar.[49]
[48] Margaret Woods and Lisa Reynolds v Viktoria Teed [2018] ATMO 121 (VIKTORIA (device) vs VIKTORIA + WOODS (device)); Soap & Glory Ltd v Boi Trading Co Ltd (2014) 107 IPR 574 (SOAP & GLORY vs PRIDE & GLORY); Anastasia Beverly Hills, LLC v Pias Corporation [2024] ATMO 123 (ANASTASIA MIARAY vs ANASTASIA BEVERLY HILL/ ANASTASIA BEVERLY HILLS/ ANASTASIA BEVERLY HILLS (device)); Velocity Conveyancing Pty Ltd v Velocity Legal Pty Ltd [2024] ATMO 38 (VELOCITY LEGAL vs Velocity Conveyancing).
[49] Monster Energy Company v PepsiCo [2021] ATMO 85 (MONSTER MUNCH vs MONSTER MEAL DEAL); COMPASS Pathfinder Ltd [2024] ATMO 16 (COMPASS HEALTH GROUP vs COMPASS PATHWAYS); Chris Kingsley v David Scott [2011] ATMO 20 (SOUL REBELLION vs REBELLION); Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2021] ATMO 62 (KANGAROO MOTHER vs MOTHER); Gilmar SpA v Bondi Icebergs Club Co-Op Limited [2008] ATMO 101 (BONDI ICEBERGS vs ICEBERG); Bianca-Moden GmbH & Co KG v Bianca and Bridgett Pty Ltd [2021] ATMO 30 (BIANCA AND BRIDGETT vs BIANCA); Gerry Webber International AG v Studio Ray LLC (GERRY vs GERRY WEBBER).
108. In my view, the shared element ‘UBER’ in the respective trade marks is not a sufficient basis for a finding that the trade marks are deceptively similar. The trade marks must be considered in their entirety. It is true that the word ‘UBER’ is the first word of each of the Trade Mark and the Section 44 Marks. I consider the most striking and memorable element of ‘UBER AI LABS’ to be the word ‘UBER’, but I do not think the same can be said of the Trade Mark or ‘UBERELEVATE’. The additional matter in each of these trade marks produces a new meaning and impression. The Trade Mark contains a number of visual elements that distinguish it from the Section 44 Marks, most notably the distinctive graphic element which does not convey the same concept as either ‘AI LABS’ or ‘ELEVATE’. The word ‘ELEVATE’ in ‘UBERELEVATE’ is equally as distinctive as the word ‘UBER’ given it does not have a discernible meaning in the context of the adjective ‘UBER’. The additional elements are likely to be recalled as essential features of each mark.
109. The Opponent submits that the word ‘UBER’ is prima facie distinctive in relation to the Opponent’s services. For the reasons discussed above in relation to the s 60 ground of opposition, I do not agree. ‘UBER’ is not an invented term. In my assessment, both the Trade Mark and the Section 44 Marks contain ordinary words with their usual spelling, and accordingly no single word is to be discounted for the purpose of the comparison. The Trade Mark is not solely comprised of the word ‘UBER’ but contains the additional aural element ‘TUTORS’, which although descriptive of the Applicant’s Services, is qualified by the adjectival word ‘UBER’ so as to convey the idea of tutoring services that are superior to those of other traders. The word ‘TUTORS’ conveys a different conceptual meaning when combined with the word ‘UBER’. Having regard to the doctrine of imperfect recollection, I consider the likely impression left by the Trade Mark on the minds of consumers would be ‘UBER TUTORS’ and not ‘UBER’ solus. Likewise, the impressions left by the Section 44 Marks are of ‘UBER AI LABS’ (or, at least, ‘UBER AI’) and ‘UBERELEVATE’ or ‘UBER ELEVATE’. The words AI LABS, ELEVATE and TUTORS are not visually, aurally or conceptually similar, and are not indicative of the same or similar services.
110. Overall, I do not consider the Trade Mark is likely to be viewed by consumers as emanating from the same source as either of the Section 44 Marks. I am not satisfied that there would be a real tangible danger of confusion between the Trade Mark and either of the Section 44 Marks. The Trade Mark and the Section 44 Marks are not deceptively similar.
111. The s 44 ground of opposition has not been established.
Decision
112.Section 55 of the Act relevantly provides:
(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.
113. The Opponent has failed to establish any of the grounds of opposition nominated in the SGP. Trade mark application number 2133533 may proceed to registration not less than one month from the date of this decision.
114.If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.
Costs
115.The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Opponent in accordance with s 221 of the Act, in the amounts set out in Schedule 8 of the Trade Marks Regulations 1995 (Cth).
Sheona Robertson
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
1 May 2025Annexure 1
Number Trade Mark Priority Date Class(es) 1519554 UBER 10 October 2012 39, 42 1624948 27 May 2014 12 1624955 27 May 2014 28 1678855 UBERX 19 August 2014 9, 38, 39, 42 1727070 UBERPOOL 29 May 2015 9, 38, 39, 42 1733050 UBER MARKETPLACE 6 November 2015 35, 39, 42 1733057 UBER 6 November 2015 39 2051975 UBER 6 November 2015 42 1891273 UBER 6 November 2015 35 1782500 UBER EATS 11 July 2016 38, 39 2109301 UBER EATS 11 July 2016 9, 35, 42 1881243 UBERELEVATE 27 October 2016 39, 41 1925573 UBERFREIGHT 6 October 2016 9, 12, 35, 36, 38, 39, 42 1871324 UBER 2 December 2016 9, 16 1925644 UBERAIR 28 April 2017 39 1943772 UBER HEALTH 11 May 2017 9, 35, 38, 39, 42 1844581 UBER 12 May 2017 9 1947139 UBER PRESENTS 24 July 2017 41 1950330 UBER AI LABS 3 August 2017 9, 16, 41 1911182 UBER MOVEMENT 5 September 2017 39 1990732 UBER RENT 16 April 2018 9, 35, 39 1989462 UBER CASH 17 August 2018 9, 35, 36, 38, 39, 42 1989465 UBER WALLET 17 August 2018 9, 35, 36, 38, 39, 42 2004293 UBER FREIGHT PLUS 18 September 2018 35 1997976 UBER PRO 19 October 2018 9, 35, 42 2008117 UBER REWARDS 13 November 2018 9, 35, 36, 39, 42 2029025 UBER COPTER 12 February 2019 9, 35, 38, 39, 42 2005640 UBER 6 March 2019 9, 12, 39, 42 1997326 Uber Bling 21 March 2019 14, 35, 45 2040914 UBER EATS 2 April 2019 16 2076940 UBER MONEY 29 October 2019 9, 35, 36, 38, 42 2093142 UBER AIR 3 June 2020 9, 35, 39, 42 2125908 UBER FOR BUSINESS 1 May 2020 9, 35, 36, 38, 39, 42 2174129 UBER DIRECT 28 October 2020 9, 35, 39, 42
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