An unfortunate case of pre-filing disclosure has cost Tesla a trade mark fight in the EU.

On 9 October 2021, Elon Musk announced "and we're even gonna have a beer" during the inauguration of its Gigafactory in Berlin, simultaneously revealing the design of a "GIGABIER" bottle.

The very next day, a German company (Juicyphant GmbH) filed an EU Trade Mark Application seeking protection for "Gigabier" in relation to beer, alcoholic beverages and brewing services. Tesla opposed on the basis of a non-registered mark used in the course of trade (i.e. unregistered rights) in Denmark and Ireland.

The following evidence was submitted:

  • Articles around Tesla's plans for its 'Giga(-)Factory' car manufacturing plant. The EUIPO noted that "GIGABIER", beer, or brewery activities were not mentioned at any point in these materials;
  • Articles, social media posts, and video screenshots of Elon Musk's speech; and
  • Extracts from Tesla's website dating from 2023, showing 'GigaBier' beer available for purchase.

The EUIPO rejected the opposition and held that Tesla failed to demonstrate prior use in the course of trade. It considered that the evidence did not provide a convincing picture of use prior to the time of the filing of the contested trade mark. Moreover, the number of views of the videos of the speech from "people all over the world" failed to provide any indications as to the relevant public's degree of recognition of the mark (if any) at the relevant point in time, nor did it equate to a real and actual presence on the relevant market.

The EUIPO took into account the brevity of the interlude between Musk's announcement and the application to decide that the evidence only supported the conclusion that the single use of the earlier mark prior to the relevant date is a brief announcement (at an event in Germany, attended by a maximum of 9,000 people), that a beer may possibly be launched in the future under that brand. The fact that this announcement attracted some comments on social media does not show that it was followed by, or attracted the attention of, a substantial part of the relevant public in Ireland and/or Denmark.

Bad faith cannot be relied on in an EU opposition, which explains why Tesla sought to demonstrate earlier use. They will almost certainly be filing an invalidity action on the basis of bad faith as soon as the mark registers. The present decision briefly refers to their argument that the same applicant allegedly applied for trade marks for 'TESLAQUILA' in 2018...

As a comparison, in the UK, it is possible to rely on bad faith in an opposition - which would have saved Tesla some hassle. Please remember to file your trade marks before making any big reveals! This could also have impacted Tesla's claim to design protection for their bottle...

The EUIPO rejected the opposition. It found that Tesla did not establish prior use of 'GIGABIER' in the course of trade of more than mere local significance.

The EUIPO referred to the purpose of this condition, namely to limit conflicts between signs by precluding an earlier right that is not sufficiently important and significant in the course of trade from preventing registration of a new EU trade mark. A right of opposition must be reserved for signs with a real and actual presence on their relevant market, which are actually used in a sufficiently significant manner, and their geographical extent must not be merely local.

ipkitten.blogspot.com/...

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.