Uber name battle dropped in favour of taxi firm

Since emerging in 2009, taxi app firm Uber Technologies have been constantly on the legal radar for one matter or the other.

Matters in regards to IP have been no exception.

An ongoing matter in relation to trade marks was in respect of their use of ‘Uber’.

The original Uber was Uber Operations who are an IT company providing computer cloud services. Uber Operations was founded in 2004.

Even though Uber Operations were around first, it was Uber Technologies who got in first to register their brand in the US.

In 2011, Uber Technologies registered ‘Uber’ as a trade mark for “computer software for coordinating transportation services, namely, software for the automated scheduling and dispatch of motorised vehicles”.

Uber Operations followed suit and filed an application in 2012 and registered ‘Uber Operations’, ‘UberXchange’ and ‘UberMover’ in relation to ‘advisory services in the field of product development and quality improvement” in class 42, and project management’.

In 2014, Uber Technologies sought to extend their brand and made an application to register ‘Uber’ for “mobile application software for connecting drivers and passengers”.

In response to this application, Uber Operations claimed that the taxi app company were causing confusion as the brand were too similar.

Uber Operations made a claim for injunctive relief, triple damages and an account for profits to remedy the time and productivity lost in dealing with thousands of pieces of correspondence which was intended to go to Uber Technologies.

It seems, however, even though Uber Operations went in hard with their claims, they have had a change of heart.

On 2^nd January 2018, the claim was dismissed by the US District Court for Florida following a voluntary dismissal filed by Uber Operations.

It is not clear the reason for the dismissal but one thing is for sure, that Uber Technologies will be glad to see the back of one less legal battle.

By Ellis Sweetenham