Trade Marks on the road

A reinforcement of the EU position against trade marks filed in bad faith

Two decisions gave the General Court and the EUIPO the opportunity to spell out the key principles that apply to the assessment of bad faith when filing an EU trade mark. They certainly remind us of the importance of submitting relevant documents to evidence that the registration’s owner acted in bad faith, including concrete information regarding the knowledge of the earlier mark and its reputation, the intention to entry onto the EU market, a pattern of filing, the lack of genuine use, etc.

In both cases, the elements submitted by the applicants for invalidity were enough to show bad faith of the EUTMs’ owners.

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In the first decision, China Faw Group Co. Ltd (China Faw) filed an invalidity action against the EUTM No. 017966582 for the word mark Hongqi registered in the name of ChiCom Marketing GmbH (‘ChiCom’) in classes 9, 12, 28 and 37, based on ChiCom’s bad faith when filing this mark. The EUIPO confirmed the invalidation of the registration and ChiCom appealed the decision before the General Court.

The General Court noted that a few facts were agreed by both parties:

• the mark depicted below was known in China as a non-registered trade mark in relation to vehicles;
• the phonetical transcription of this sign is ‘Hongqi’; and 
• this sign and ‘Hongqi’ are phonetically / conceptually identical.

China Faw submitted numerous documents in these proceedings, including extracts from the European press specialising in the automotive sector and general websites (such as bbc.com or forbes.com) referring to the notoriety of the Hongqi sign in the automobile sector in China. Additional materials, published on various EU websites before the filing date of the Hongqi EUTM, discussed the opening of a design center in Munich under the direction of China Faw whose aim was to expand its activities outside China.

The Court confirmed ChiCom’s bad faith when filing the EUTM No. 017966582 for Hongqi as:

• it was aware of the Chinese sign when filing the application;
• it knew that this sign enjoyed a high reputation in China (reputation which was also known in the European Union, including by ChiCom); and
• the lack of evidence showing that there was an imminent marketing of the products in the European Union by China Faw was not relevant as China Faw had shown organisational measures to prepare an entry onto the EU market, that could not be ignored by ChiCom.

*ChiCom Marketing GmbH v EUIPO (Case T-533/23, 6 November 2024, General Court) - here

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In the second decision, Tesla Inc. (Tesla) filed an invalidity action against the EUTM No. 005838727 for the word mark TESLA registered in the name of Capella Eood (the “owner”) in classes 12 (“vehicles”, etc.) and 25 (“clothing”), based on the owner’s bad faith when filing this mark. The EUIPO confirmed, in a 55-page decision, that the mark was filed in bad faith and therefore invalid. The following elements, supported by evidence, were considered to show that the owner acted in bad faith:

• Time of filing – the TESLA mark was filed shortly after Tesla’s international recognition. The owner was invested in the automotive industry and could not ignore this recognition.
• Pattern of filings – it was established that the owner had filed speculative filings in numerous jurisdictions, in order to prevent third parties from entering into a market. This showed exploitation of the trade mark system for financial gain.
• Lack of genuine use – the owner restricted the list of goods a number of times to try and obstruct the opposition proceedings and assigned the mark 8 times (between the application date and the office’s decision) to different entities having the same address. Also, there was no evidence of genuine use or commercial activity from the owner.

*Tesla Inc v Capella Eood, EUIPO Invalidity No. C56966, 17 December 2024

The popularity of non-traditional trade marks is increasing. A non-traditional trade mark can be a useful tool to innovative businesses, provided the registration hurdles can be overcome. Our review of 2024 includes decisions from the EUIPO Board of Appeal on some of the unusual mark types, including sound and 3D mark, but also one decision in relation to a more traditional sign.

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No protection for the word mark LETZTE GENERATION

The sign LETZTE GENERATION (i.e. ‘last generation’ in English) amounts to nothing more than the simple factual statement that the goods at issue (mostly vehicles in class 12) are the latest version of a model of the product offered under it. As it is desirable to have the last, most recent model of a product that is fitted with the latest state of the art and has a trendy design, this expression is also laudatory. It does not constitute a valid trade mark.

*Case R 492/2024-5, 19 December 2024, Fifth Board of Appeal

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No protection for the acceleration of a vehicle engine

The EUIPO refused the registration of a mark filed by Porsche consisting of a 16 second sound reproducing the acceleration of an engine (available here) in relation to automotive-related products and services, for lack of distinctiveness. The Examiner found that the mark could not be perceived as unusual in connection with the goods/services at issue and would not enable the relevant public to distinguish Porsche's goods/services from those of other providers.

The Board of Appeal confirmed that the EUTM application consists of a sound which increases in intensity and strength until a maximum and then stops. The sound conveys the feeling of acceleration and power and therefore is related to cars and vehicles in general. Therefore, the sound mark refers to the goods/services and is devoid of distinctive character.

*Case R 1900/2023-5, 20 June 2024, Fifth Board of Appeal

While the issue surrounding representation has reduced over the years thanks to an increasing use of technology, non-traditional trade marks often face challenges around their distinctiveness – although they should not face a tougher examination process than a word/figurative mark.

BMW obtained the registration of a 3-second sound mark back in 2021 in relation to vehicles (EUTM No. 018424124 – available - here) and Audi successfully registered the sound similar to a heartbeat in 2019, in relation to vehicles and related services (EUTM No. 018071642 – available here). 

Whilst sound marks can be registered, there has to be sufficient distinctiveness in the sound to justify its acceptance. The nature of the relevant goods/services and whether the sound marks are common in that sector could be relevant factors.

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No protection for the shape of a car

The sign applied for (being the three-dimensional representation of a stylised automobile identifying the 250 TESTA ROSSA car) is not inherently distinctive in relation to vehicles. The documents submitted in support of the acquired distinctiveness claim did not relate to the entire European Union and so the owner failed to demonstrate that the sign had acquired distinctiveness through use in relation to vehicles.

*Case R 1224/2023-5, 26 July 2024, Fifth Board of Appeal

The General Court annulled a decision issued by the Board of Appeal, in relation to the shape of car headlights. Please see our related review.

In the United Kingdom, the following trade marks were also refused to registration in relation to vehicles and parts thereof in class 12:

 in the name of Volkswagen Aktiengesellschaft

  in the name of Renault

Volvo filed a EUTM application for a 3D shape mark representing car headlights and set out below, notably in relation to “headlamps for vehicles” in class 11 and “cars; parts and components of vehicles” in class 12. Both the EUIPO and the Board of Appeal refused the application for lack of distinctive character. Specifically, the Board of Appeal found that the design of the mark does not differ significantly from the headlights commonly used in the automotive industry.

The General Court confirmed that novelty or originality are not relevant criteria for assessing the distinctive character of a trade mark. In order to be registrable, the shape should not be something that is common or generic in the industry but must be substantially different from the basic shapes of the product in question, commonly used in trade, and not appear to be a mere variant of those shapes. It must also allow consumers to identify the product offered under the sign as coming from a specific brand owner. 

The Court found that the combination of the elements creating the EUTM application, i.e. the Y geometric graphic shape, is not common and gives that application a particular appearance which differentiates it significantly from other shapes of headlights existing on the market. This shape is clear, as the Y contrasts strongly with the dark background of the headlight, and is clearly visible during the day as well as in the dark. 

Therefore, the EUTM application was found to have the minimum level of distinctive character to be registered as a trade mark.

*Volvo Personvagnar AB v EUIPO (Case T-260/23, 26 June 2024, General Court) - here

No likelihood of confusion despite a high degree of reputation

This decision is a nice reminder of the documents required to show reputation in a trade mark, but the fact that a mark has a reputation may not be enough to conclude to a likelihood of confusion.

In this instance, BMW submitted numerous documents showing the reputation in its earlier marks for M set out below. The EUIPO confirmed the high degree of reputation in the earlier marks (and therefore enhanced distinctiveness) for automobiles and part thereof, among the relevant public in Germany.

Unfortunately for BMW, this was not enough to confirm a likelihood of confusion between the marks under comparison in these opposition proceedings.

Opposed trade mark application:  

BMW’s earlier trade marks with reputation:    & M

*BMW v Sichuan Minghong Power Co., Ltd, EUIPO Opposition No. B 3207500, 17 December 2024

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No likelihood of confusion between KNAUS E. POWER and e-POWER

Sharing a weak element may not be enough to conclude to a likelihood of confusion.

Nissan opposed Knaus Tabbert AG (“Knaus”)’s UK designation of IR No. 1668457 for KNAUS E.POWER. The opposition was based on a likelihood of confusion between this designation and the earlier trade mark registration for the stylised mark depicted below. The earlier registration and the UK designation covered, amongst others, class 12 goods including “electric vehicles”. 

The UKIPO dismissed the opposition on the basis that the earlier stylised mark has a low distinctive character, being descriptive of electric power and commonly associated with electric vehicles. Also, the stylized presentation of this earlier mark was not found significantly distinctive. The dominant and distinctive element of KNAUS E. POWER lay in the word element KNAUS. As such, the visual, aural and conceptual similarities between the marks were considered to be low. The UKIPO concluded there was neither likelihood of direct confusion, as KNAUS is a distinctive and dominant component that differentiates the marks, nor likelihood of indirect confusion, as the shared element (E.POWER stylised / E.POWER verbal) was not so distinctive that it could imply an economic connection between the parties.

*Knaus Tabbert AG v Nissan, UKIPO Opposition No. O/0805/24, 21 August 2024

An individual was selling vehicle spare parts, including radiator grilles adapted for Audi older models. The grilles contained a carved space, taking the shape of the AUDI Logo depicted below (and protected as an EUTM notably for land vehicles and parts in class 12), designed for mounting the Audi emblem. 

Audi issued trade mark infringement proceedings against this individual before the Regional Court of Warsaw, arguing that the grille allowing the attachment of the Audi emblem represented the AUDI Logo and was therefore unauthorised use of the EUTM.

The defendant argued that Audi cannot object to the sale of non-original radiator grilles incorporating an element designed for the attachment of the Audi emblem as it is arguably necessary to indicate the intended purpose of the product, which is allowed by Article 14(1)(c) EUTMR.

The Polish Court was unsure whether this use would constitute infringement and whether the seller could rely on Article 14(1)(c) EUTMR as a defence. It referred the case to the CJEU for a Preliminary Ruling. The Court considered that:

• a third party who, without the consent of the manufacturer of vehicles which is the proprietor of an EUTM, imports and offers for sale spare parts containing an element which is designed for the attachment of the emblem representing that trade mark and the shape of which is identical with, or similar to, that trade mark, makes use of a sign in the course of trade and such use is liable to affect the trade mark’s ‘badge of origin’ function; and
• the shape of the carved space was driven by the commercial objective of marketing a radiator grille which would resemble the original Audi-branded grille as closely as possible. As such, Article 14(1)(c) EUTMR would not apply as a defence and does not preclude a manufacturer of vehicles, owner of an EUTM, from prohibiting this use.

*Audi AG v GQ (Case C-334/22, Request for a Preliminary Ruling, 25 January 2024, CJEU Fourth Chamber) - here