Jessica Bell – Lawyer, Kalus Kenny Intelex, Melbourne Australia

David Cinque – Special Counsel, Kalus Kenny Intelex

The Australian Trade Marks Office has permitted the registration of the trade mark UBER TUTORS after finding that transport and delivery giant, Uber Technologies Inc (Uber Tech) failed to oppose the mark’s registration under the Trade Marks Act 1995 (Cth) (Trade Marks Act).

Background

Uber Tech

Uber Tech, most commonly known as ‘Uber’, is well known for its on-demand transportation and delivery services. Uber Tech first began using the UBER trade mark in around late 2010 when the company began providing on-demand transportation services in the United States. Uber Tech quickly grew and by 2011, was providing on-demand transportation services internationally. The company has since expanded, offering on-demand food (Uber Eats) and package (Uber Connect) delivery, and a range of other services.

With a large range of services on offer, naturally Uber Tech holds multiple trade marks containing the word UBER in Australia. In fact, Uber Tech currently holds 39 current UBER-related trade mark registrations, with a further two applications under examination for further registrations.

Notably, there are a number of trade marks on the Australian trade mark register which contain UBER, but are not registered to Uber Tech.

Uber Tutors

Uber Tutors Pty Ltd (Uber Tutors) is an Australian startup company that was established in 2020 with a plan to develop a web-based portal to provide online tutoring services and connect with students around the globe in a wide range of study areas.

Shortly after its incorporation, Uber Tutors made an application to IP Australia to register the UBER TUTORS logo, a black and white mark containing a stylised letter ‘U’ which resembles a tutor/teacher wearing formal attire, namely a tie and glasses (the Tutors Mark), in class 41 for education related services.

Uber Tech then commenced opposition proceedings against the Tutors Mark in August 2021.

Uber Technologies Inc v Uber Tutors Pty Ltd [2025] ATMO 78

In its opposition, Uber Tech argued that the Tutors Mark should not be registered on the following grounds:

1. section 42(b) of the Trade Marks Act

Use of the Tutors Mark would be contrary to law on the basis that the Tutors Mark would constitute misleading or deceptive conduct or a false or misleading representation under

the Australian Consumer Law and/or satisfy the elements of the tort of passing off because of the similarities between Uber Tech’s marks and the Tutors Mark.

2. section 44 of the Trade Marks Act

The Tutors Mark was substantially identical with, or deceptively similar to, two of Uber Tech’s marks, namely UBER AI LABS and UBERELEVATE, both of which are registered in class 41 with respect to education services.

3. section 60 of the Trade Marks Act

Uber Tech’s relevant UBER marks had acquired a substantial reputation in Australia, and because of that reputation, any use of the Tutors Mark would be likely to deceive or cause confusion amongst consumers as to Uber Tutors’ services being associated with Uber Tech.

4. section 62A of the Trade Marks Act

Uber Tutors had acted in bad faith by deliberately choosing the Tutors Mark with the intention of evoking amongst consumers a correlation between Uber Tech and the tutoring services. This argument was on made on the basis that Uber Tutors had previously posted an image on Instagram using the hashtags #uber and #ubereats.

Decision

Ultimately, Uber Tech failed to establish any of its grounds of appeal and the Hearing Officer was satisfied that the Tutors Mark should proceed to registration.

The reasons for the rejection of each ground of opposition are as follows:

1. section 42(b) of the Trade Marks Act

The Hearing Officer was not satisfied that the strict criteria for determining whether there was a breach of the Australian Consumer Law was met by Uber because the Tutors Mark was not likely to mislead or deceive consumers, nor did the use of the Tutors Mark satisfy the requirements of the tort of passing off.

2. section 44 of the Trade Marks Act

The Hearing Officer agreed that Uber Tutors’ services were of the same description as the services of Uber Tech’s UBER AI LABS and UBERELEVATE marks. However, the Tutors Mark was not substantially identical or deceptively similar to either of these existing marks and was not likely to cause confusion for consumers.

Relevantly, the visual features of the Tutors Mark, as well as the additional word TUTORS, were held to be visually, aurally and conceptually distinct from Uber Tech’s AI LABS and ELEVATE.

3. section 60 of the Trade Marks Act

While Uber Tech’s marks had acquired a significant reputation in Australia with respect to transport and delivery services, this reputation did not include education services.

The Hearing Officer was also not satisfied that the visual similarities between the Tutors Mark and Uber Tech’s marks would likely deceive or cause confusion. This is because the Tutors Mark, when viewed as a whole, contained additional elements that were distinct to Uber Tech’s marks, such as the stylised letter ‘U,’ stacked words, and the word ‘TUTORS.’

It was also noted that ‘uber’ has a well-understood meaning in Australia, connoting the English synonym to ‘outstanding’ or ‘super,’ or alternatively, the German word which translates to mean ‘over, above, or beyond’. This resulted in a lower chance of confusion as the term ‘uber’ is common amongst traders across a wide variety of industries.

4. section 62A of the Trade Marks Act

The Hearing Officer determined that Uber Tech’s evidence of a single Instagram post (as mentioned above) was not sufficient evidence to prove that Uber Tutors had demonstrated any pattern of unscrupulous, underhand, or unconscientious behaviour. Therefore, the UBER TUTORS application had not been made in bad faith.

Will there be an appeal?

Whether Uber Tech will appeal the Australian Trade Mark Office’s decision remains to be seen. However given the Hearing Officer’s strong opposition to its arguments, it is unlikely that Uber Tech will take this step.

Key takeaways

· This decision demonstrates the importance of incorporating highly distinctive elements, such as the Tutor Mark’s stylised ‘U’, to differentiate one’s branding, particularly for businesses seeking to leverage established terms into new markets.

· This decision also highlights that even brands that have become a household name are not guaranteed exclusivity over common or descriptive words, phrases or indicia. Where such elements are used in cross-industry contexts, it does not necessarily mean that consumers will be misled or deceived into thinking a product is of a particular commercial origin.

If you have questions about trade marks or brand protection, contact the KKI Commercial Team.