The UBER lesson: broad registration alone isn’t enough

“Just grab an Uber.”

In the big city, you hear it everywhere: on the street, in the pub, among friends. As a trademark lawyer, you feel the reflex to point out generic use of the brand name. The reality is that even your best friend will ignore you when you do.

What started as an app to book a ride with a few taps has grown into a platform with multiple variations and subservices, from rides to delivery. That expansion often shows up in trademark portfolios as well. When filing, the cover is chosen generously, using broad terms like computer software, telecommunications and a range of related services. This is handy because it prevents your trademark rights from becoming too narrow if your product later expands.

But that wide cover has a weak spot. If the mark is not actually used, someone can challenge it. And that is exactly what happened with UBER. The German company Serviceplan Group SE requested the cancellation of the European word mark ÜBER due to non-use. This led to years of proceedings, including a decision, an appeal, a referral back and now another decision.

In a cancellation for non-use, the burden of proof lies with the trademark owner. They must objectively show where, when, how and to what extent the mark has actually been used for the registered goods and services. And importantly, per category. The key question in this series of decisions was the extent to which “computer software” could be divided into subcategories. UBER had registered the mark both for software in general and for software for vehicle planning. Does the use of the specific software application count as use of the broad term software? Or should the specific software be considered a subcategory? The EUIPO Cancellation Division opted for the latter.

Although Uber submitted a substantial set of evidence, including app store screenshots, rankings, press articles, social media, invoices and declarations of use and revenue, the mark had only been used for some specific products. For the broader categories, the EUIPO found no proof.

The practical lesson is clear. A broad filing strategy can still be useful, but only if you can actually support it and have multiple applications of the product in prospect. An overly broad registration without actual use across all goods and services leaves a trademark vulnerable to a cancellation action for non-use. This risk cannot be easily mitigated by simply re-filing the mark later for the same goods or services, as such a re-filing could be considered filed in bad faith. That is why it is essential, when filing a trademark, to carefully consider your commercial plans and long-term strategy.

Author: Erwin Haüer

Bio: Erwin is a trademark attorney and, as the managing partner, in charge of IT and Information Management. He works extensively with startups and scale-ups, while his clientele also includes numerous multinational corporations. Erwin possesses a sharp wit and a keen eye for remarkable trademark news and curious brand infringements.