recent, British Intellectual Property Office (UKIPO) Made a move in favor of auto giant Tesla (Tesla) Verdict of. The company succeeded in getting a British trademark registered by a small fast food restaurant "TESLA CHICKEN & PIZZA (Tesla chicken and pizza) " It becomes invalid.

This kind of "David versus Goliath (David versus Goliath) " Such cases often make the news in Britain. however, For brand owners and intellectual property owners, There are a number of very important legal principles involved in this decision.

Background overview

2020 years 8 month, Amanji, the owner of a takeout place．Ngari (Amanj Ali) At # 43 Class registered (Food and beverage services are involved) British trademark "TESLA CHICKEN & PIZZA" , And make use of the registered trademark pair "TESLA" The British trademark application was challenged, The reason is that the application filed by automaker Tesla also covers No 43 Restaurants in the class with takeaway services.

In response to Ali's plea for dissent, Tesla filed a trademark against the prior registration "TESLA CHICKEN & PIZZA" Invalid application. merely, In fighting for the aforementioned prior rights, Despite a lot of evidence from Tesla, But it does not involve any no 43 Class of registered trademarks. therefore, Even if Tesla claims its automotive products and services (Refer to # 9 class, The first 12 class, The first 36 Class sum order 37 class) Enjoy a reputation, But it's not registered "Prestige goods" As well as alcoholic beverages and restaurant services, it is difficult to obtain corresponding rights. Also included in Tesla's defense "malice" This reason.

Reputation in the UK

In its pleadings and submissions, Tesla claims to have a reputation in a variety of goods and services, Which includes "CARS, The battery that powers the electric motor of an electric vehicle, Automotive maintenance and repair services, Automobile financing" and "Alcoholic beverage" and "Food and drink provided" . When it comes to alcoholic beverage goods and restaurant services, Tesla says one of its reputations is a "Expected reputation" .

Based on evidence submitted by Tesla, The car company is involved in cars, Related maintenance and repair services as well as automotive batteries "TESLA" Reputation in the trademark.

To prove its reputation in the alcoholic beverage business, Tesla points out, Elon．Maske (Elon Musk) in 2018 In one tweet last year, Tesla-branded tequila was mentioned, namely "Teslaquila Coming soon" , And subsequently in "Sun" An article on sales was published. After reviewing this evidence, The hearing officer found the content of the tweet too far-fetched, He also said the article was about sales work in the United States, So it does not prove that Tesla has a reputation in the UK. therefrom, These arguments don't hold water either.

In terms of restaurant business, Tesla submitted Musk in 2018 Another tweet from that year as evidence, namely "Will open a vintage car in a Tesla Supercharger station in Los Angeles, Roller skates and a rock restaurant" . therewith, The hearing officer decided that the evidence was weaker than the alleged tequila, It was also not adopted. therefore, Take the launch of alcoholic drinks and restaurant services in the UK, Tesla does not anticipate reputational rights.

For intellectual property owners, This is a warning. From the usual legal point of view, Advertising alone is not enough to generate a reputation in the UK. Businesses must engage in genuine trade in goods or services. Although courts have eased that requirement to some extent, So that companies can claim reputation before trading, But these businesses still need to reach "Carry out extensive advertising work" The threshold of.

however, The evidence submitted by Tesla can be regarded as relevant "And what form that reputation might take" Lesson plan of. Via Twitter (Twitter) Take. . . for example, If Musk tweets about it "Be renamed as X" s tweets, And was widely hyped for weeks or months, Then this may be produced X Expected reputation.

Trademark reputation and misrepresentation

To get the defendant to "misrepresentation" antiplaintiff "reputation" Make a connection, Usually requires the plaintiff to prove that the other party constitutes some kind of "deception" behavior, But this kind of proof is often very difficult.

In the present case, Before reaching an opinion in favor of the car companies, The hearing officer delved into the realities of the electric vehicle market and its average consumer. It is found that, Tesla is likely to set up food and drink stores near its electric vehicle charging facilities in the UK.

The hearing officer found that the degree of connection between the two companies and the misrepresentation were objective. The intended use of the Ali logo in the UK means he may open a restaurant in a location particularly close to a Tesla charging station. therefore, Customers will be deceived, Mistakenly believe that there is some kind of economic connection between the two, It also constitutes a misrepresentation of reputation.

malice

Ali demanded payment 75 Ten thousand pounds, To turn his "TESLA CHICKEN & PIZZA" Registered trademark transfer to Tesla. That got people thinking "malice" two-word.

Malicious behavior will be dealt with very seriously. merely, The parties need to provide very sufficient evidence of this in order to UKIPO And succeeded in the British courts.

Ali admitted in his counterstatement, Tesla has a reputation in the automotive world. In addition, The hearing officer also rejected another of Ali's arguments, namely "Tesla is a Serbian surname, Tesla didn't create it" . therefrom, The court held that "TESLA CHICKEN & PIZZA" The name was created to capitalize on the reputation and fame of the Tesla logo, Or to keep the car company out of the restaurant market, Thus attempting to gain advantage in an unfair manner in the transfer of the trademark.

Although Tesla is known for "TESLA" Claims for the trademark's goodwill in the alcoholic beverage and restaurant service businesses were not successful, But the trademark's reputation in the automotive world helped it win. finally, All of Alibaba's registered trademarks have been revoked. (Be compiled from www. mondaq. com)

TRANSLATORS: Liu Peng　proofread: Wu Xian



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