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Some of Tesla's Denied TM Registrations Resuscitated by Beijing High

Tesla, a renowned American electric vehicle brand, sought trademark registration of its namesake trademark on goods including batteries, and was denied for both TESLA and Tesla with figure were squatted. Tesla Motors then engaged in an allout operation for recourse of right. At the end of September this year, Beijing High People's Court supported some of Tesla's claims in its final judgment, revoking the first- instance decision and the reexamination decision of rejecting the registration application of No. 17635965 TESLA trademark (trademark in dispute) made by the Trademark Review and Adjudication Board (TRAB) of the former State Administration for Industry and Commerce (SAIC).

The trademark in dispute was filed for registration by Tesla to SAIC's Trademark Office (TMO) on August 11, 2015, and would be approved to be used on Class 9 goods including battery chargers, batteries, accumulators, transformers and distribution boxes.

TMO rejected the registration application of the trademark in dispute on the ground that No. 17635965 Tesla trademark (trademark in dispute), used on battery chargers, batteries and accumulators and No. 11485034 Tesla trademark (No.1 cited trademark), No. 4767161 TESLA trademark (No.2 cited trademark), No.11899344 TESLA trademark (No.3 cited trademark), No. G888438 Tesla and its figure (No.4 cited trademark) have constituted similarity on similar goods.

The disgruntled Tesla lodged a request to the TRAB for review. On June 28, 2017, TRAB said no as well, rejecting the registration application of the trademark in dispute.

Not ready to call it a day, Tesla sought justice at Beijing IP Court.

After hearing, Beijing IP Court held that the trademark in dispute and the cited trademarks constituted similarity on similar goods. The evidence Tesla had provided could not prove that the trademark in dispute and the company had established a unique association and would not confuse relevant public. Accordingly, the Court rebuffed Tesla's request in its first-instance decision.

Tesla then appealed to Beijing High People's Court.

Beijing High held that when being used on battery chargers, batteries and accumulators, the trademark in dispute and four cited trademarks do not constitute similarity on similar goods. But on all other designated goods, the trademark in dispute is found having constituted similarity on similar goods with No.2 cited trademark, No.3 cited trademark, No.4 cited trademark. The Court then revoked the first- instance judgment and the reexamination decision.

Source: China Intellectual Property News, CNIPA

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