Urban Clean IP Pty Ltd v Urban You Pty Ltd

This matter concerned an opposition to a trade mark application brought by Urban Clean IP Pty Ltd (the Opponent) against Urban You Pty Ltd (the Applicant). The dispute arose from the Opponent's objection to the Applicant's trade mark application. The decision was made by Nicholas Barbey, a Delegate of the Registrar of Trade Marks.

The court was required to determine whether the Opponent had established any of its nominated grounds of opposition, specifically those under sections 44 and 60 of the relevant Act, as the section 58A ground was not pursued. The Opponent bore the onus of proof, which was to be assessed on the ordinary civil standard of the balance of probabilities. The relevant date for determining the rights of the parties was 9 August 2017, being the filing and priority date of the Applicant's trade mark.

The Delegate noted that the Opponent's evidence, a declaration by Damien Boehm, lacked any supporting documentary evidence, significantly diminishing its probative value. The Opponent's primary argument was that 'URBAN' constituted the essential feature of its trade mark, and this element should be given greater weight in any comparison. While acknowledging that 'CLEAN' was descriptive for cleaning services, the Opponent contended that 'URBAN' was not descriptive or common to the trade and was the distinguishing element consumers would recall. The Delegate found that certain parts of the Opponent's submissions, objected to by the Applicant as introducing factual allegations not in evidence, were immaterial to the outcome and therefore did not require a formal ruling on admissibility.