The “UBERWOOD” Case — Opposition No. B 3 180 646
In the opposition B 3 180 646, Uber Technologies Inc. opposed the registration of the word mark “UBERWOOD” (EUTM application No. 18 703 135) filed by Classen Holz Kontor GmbH. The opposition was based on several earlier “UBER” marks, including “UBER,” “UBEREATS,” “UBERPOOL,” and “UBER DIRECT,” relying on Article 8(1)(b) EUTMR (likelihood of confusion) and Article 8(5) EUTMR (reputation).
The essential point in this case is that, despite certain similarities between the signs, the respective goods were found to be entirely dissimilar.
The contested mark covered building materials and floor/wall/ceiling coverings (Classes 6, 19 and 27), including metal fittings, laminate flooring, wooden panels and construction components.
The earlier “UBER” marks covered software, telecommunications, transport and delivery services, IT services, business management services, vehicles and security-related services across Classes 9, 12, 35, 38, 39, 42 and 45.
Findings of the Opposition Division
- The goods and services differed completely in nature, purpose, method of use, producers and distribution channels.
- They were neither competitive nor complementary and did not originate from the same market sectors or business logic.
- Accordingly, the goods and services were deemed clearly dissimilar, defeating the requirements of Article 8(1)(b) EUTMR, irrespective of any distinctiveness of the earlier marks.
Regarding Article 8(5) EUTMR (Reputation)
Uber submitted extensive evidence of reputation within the EU, including media coverage, marketing materials, app usage statistics, social media presence and commercial data.
The Division noted that evidence relating to the United Kingdom could not be considered, as the UK was no longer part of the EU following Brexit, and reputation under Article 8(5) must exist within the EU at the time of the decision.
However, the Division held that the conditions of Article 8(5) were not fulfilled because:
- Even considering the remaining EU-based evidence, there was no risk that use of “UBERWOOD” for construction materials would take unfair advantage of, or be detrimental to, the distinctive character or reputation of the earlier “UBER” marks.
- No credible link existed between the respective markets, and therefore no risk of injury could be established.
Outcome
The opposition was rejected in its entirety. With no similarity of goods and no injury under Article 8(5), the contested mark proceeded to registration. The opponent was ordered to bear the costs, fixed on the basis of the maximum rate set therein.
