The United States District Court for the Northern District of Florida recently made court orders requiring Uber Technologies, owner of the Uber transport app, to ensure that search engine results do not overshadow a local Florida company, Uber Promotions.

Uber Promotions, a Gainsville company offering several services including transportation (limousine and charter services), has been around since 2006. Uber Technologies introduced its Uber transport services in 2010 and specifically to Florida in 2013.

As Uber Technologies’ presence in Florida grew, Uber Promotions started to receive calls from consumers complaining about the service of Uber Technologies taxis, thinking that Promotions and Technologies were one and the same. As their reputation and customer base took a hit, Uber Promotions contacted Technologies demanding that they cease their marketing and advertising of “Uber Promotions”. Promotions also initiated legal action under the Lanham Act (trade mark law) and Florida state law, seeking a preliminary injunction against Technologies from using the “Uber” marks in relation to its services in Florida.

The court did not grant the preliminary injunction but made an order for Technologies to make sure that the results appearing from a search engine do not replace Promotions with their own.

Trade Mark Infringement Claim

Since 2006, Promotions has developed its common law trade marks in Florida and other states by building up its reputation through extensive use of the marks in advertising and marketing. It did not register any of its trade marks, relying only on the common law treatment of unregistered trade marks.

Technologies began using the term “User Promotions” on their Instagram campaign and lodged an application to register the trade mark “Uber” in the US.

The judge rejected Promotions’ request that Technologies stop using the Uber marks in Florida, given that Promotions was only likely to show that they had an enforceable trade mark in the Gainsville area (not the whole of Florida). Further, Justice Walker believed that a preliminary injunction against Technologies would cause Technologies greater harm than what Promotions would face if the injunction were not granted.

“A preliminary injunction should not serve as a bazooka in the hands of a squirrel, used to extract from a more fearsome animal a bounty which the squirrel would never be able to gather by his own labors – at least not when the larger animal is mostly without sin,” analogised Justice Walker.

Justice Walker’s Unconventional Court Order

Technologies and Promotions rely on different media to make their sales. Technologies uses its Uber app, and Promotions engages through phone and website bookings. Justice Walker considered this and made the order that Technologies should set up a phone number in the Gainsville area so that it would show up on search engine websites, but not replace the Uber Promotions Gainsville phone number. He further ordered that if a person searches “Uber promotions Gainsville phone number”, Technologies’ Gainsville number should not show up.

Justice Walker’s solution provides preliminary relief to Promotions without disproportionately handicapping Technologies.

The Difficulty With the Court Order

In theory, the decision appears to be a creative solution to a difficult problem, but in practice, effectively complying with the court order may be difficult for Technologies. The main reason for this is that for Technologies to ensure the desired results of the search engine, the search engine providers (Google, Yahoo, Bing etc.) need to be on board. Google’s Adwords, for example, uses its own algorithm and system to place paid advertising and organic results on a search page.

Even if Technologies itself takes the necessary steps not to manipulate the search results in contravention of the court orders, the failing of the third parties to do so may result in Technologies’ breach.

Unregistered Trade Marks in Australia

Although Australia’s common law affords protection for unregistered trade marks, it is not to the same degree as in the United States. Under the common law tort of passing off, a business may take action against another business using their name or logo without permission.

Passing off differs from trade mark infringement because it is not based on a proprietary right, but rather is enforced where there are likely confusing or misleading activities associated with a business’ branding.

Uber Promotions would need to show the harm to their business has taken place due to consumers confusing Uber Promotions and Uber Technologies. Infringing a trade mark does not require a business to provide evidence that they have built a reputation in the market, or that consumers have been misled. It is much harder to make a claim of passing off than trademark infringement.

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In this case, the court orders and proposed solution reveal the unfamiliar territory of the online world when it comes to trade marks. Business practices relating to trade marks are different in cyberspace to traditional practices. This is not the first case that considered an unconventional decision, and we anticipate it certainly won’t be the last. 

Questions? Let us know or tag us on twitter @legalvision_aus.

Dhanu Eliezer

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