Businesses rely on distinctive words and logos to signify their trade, create their identity, and build a brand associated with specific attitudes, characteristics and emotions. It is not unusual for brands to have different reincarnations – not every trade mark or logo can remain timeless.

Great brands have a particular message – a niche that serves to identify the business’ services. If a business’ services expand and change, so too must its branding. Aside from designing a new brand (or redesigning the old), there are other practical and legal issues to consider. This article sets out these issues in light of Uber’s major rebranding exercise.

No U-Turns

On 2 February 2016, the sleek, minimalistic grey icon with a single letter ‘U’ famously associated with one of the world’s largest sharing economies was replaced with one that is colourful and shapely – a circle with a square indent against a pattern of lines. Uber has taken a bold step and rebranded itself. The exercise resulted in the loss of its iconic ‘U’, an act that drove many users onto social media to air their disapproval.

Driving Your Experience

Uber explained the motives behind this rebranding. Without repeating too much of what has already been said on social media, the key messages behind their rebranding are:

  • Launching two main marks: Uber dedicated one to riders – a disc with square and horizontal stripe indent (for our purposes we will refer to this as the ‘Riders’ Mark’). The other dedicated to the drivers (or as Uber likes to call them, ‘Uber Partners’) – a hexagon shape with a square and vertical stripe dividing the shape (which we will refer to as ‘Drivers’ Mark’);
  • Reflecting Uber’s culture and expanding services: Wired reported CEO Travis Kalanick’s article representing Uber’s culture as ‘bits’ (the technology facilitating Uber’s services) and ‘atoms’ (representing users of Uber’s services) inspired the design. The new brand signals Uber’s move away from simply being a ride-sharing marketplace; and
  • Localising the experience: the palette and pattern used in the new brand will vary depending on user location, emphasising Uber’s local experience. Whether this explains the rectangular styled pattern or the turquoise and green colour pallet for Australia, I will leave as a matter for each user to determine.

Following the Rules

A trade mark can be a variety of things including a sign, a word, a phrase, a colour, etc. In Australia, a trade mark is protected under the Australian Consumer Law, by the tortious action of passing off, and (if the trade mark is registered with IP Australia) protected under the Trade Marks Act 1995 (Cth).

As Uber designed its new logos, it would have also undertaken trade mark searches to ensure that another business or entity didn’t already use these new designs. For a global business such as Uber, it would be prudent to conduct searches in each jurisdiction where the new marks will be used.

Once Uber finalised its design, it would apply to register the trade mark in each relevant jurisdiction (either using the Madrid Protocol or by submitting discrete applications to each jurisdiction) before launching their new trade marks. The applications don’t need approval before launch, lodging the application to acquire a priority date is generally sufficient.

Before this rebranding exercise, the word ‘UBER’ and the stylised ‘U’ logomark we are all so familiar with were already registered trade marks in Australia. As of the date of this article, Uber has three pending trade mark applications associated with this rebranding exercise:

  • An image mark comprising of the shape of the Riders’ Mark;
  • An image mark comprising of the shape of the Drivers’ Mark; and
  • An image mark comprising of the rectangular pattern.

Interestingly, Uber lodged two trade mark applications at the end of last year to register the words:

  • ‘UBER MARKETPLACE’; and
  • ‘UBER’ in additional classes of goods and services, expanding on the trade mark class description in the two trade mark classes under which the word UBER is already registered.

Timing of Registration

Some may perceive lodging trade mark applications on the date of the proposed brand launch as cutting it close. However, this is likely to be a commercial decision by Uber to protect and control how they revealed the new marks. Notably, Uber didn’t reveal their marks first through trade mark registers, which are public databases.

A registered trade mark can be removed on grounds of non-use. Therefore, even if Uber had conceived of their new marks months or years ago, or intended to expand Uber’s services, it would not be able to register the marks until it is used, or there is intention to use the marks.

Separating Features of the New Trade Mark

Uber wants the Riders’ Mark and the Drivers’ Mark as the key marks associated with their brand (as opposed to the shape complete with the patterned backdrop and palette seen as an app icon on user devices). Put another way, what makes the new Uber trade marks distinctive are the shapes representing the Riders’ Mark and the Drivers’ Mark, which we will see used against different patterns and colour pallets.

Separately, Uber intends for the patterns unique to each local area to become a distinctive feature of the user experience itself. Given the array of patterns created by Uber’s design team for its numerous service locations, we question whether this kind of trade mark strengthens or dilutes the Uber brand. However, we will consider this in another article.

We note that at the time of this article, IP Australia has yet to assess these marks and approve their registration in Australia.

Arriving At Your Destination

Your business’ trade mark cannot perform its functions if your business cannot assert exclusive rights over the mark. This is why before undergoing any branding or rebranding exercise, you should complete a trade mark search to confirm your proposed trade mark isn’t already in use. If this is the case, register your trade mark in the jurisdictions where you conduct your trade.

When applying to register your trade mark, you also need to consider under which classes of goods and/or services you will use your trade mark. Remember you should only register a trade mark you are using, or you intend to use.

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Questions about registering your trade mark in Australia or in a foreign jurisdiction? Ask our intellectual property lawyers on 1300 544 755.

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