“And we’re even gonna have a beer” – Tesla’s fight for GIGABIER

Tesla is undoubtedly fast. Its flagship model can go 322 km/h and accelerates from 0 to 100 km/h in 2,1 seconds. Yet, Tesla was beaten to the punch by a German company, which registered the EU trade mark ‘Gigabier’ one day after Elon Musk’s announcement of Tesla’s intention to sell ‘GIGABIER’. Tesla filed an opposition on the basis of earlier non-registered rights under Art. 8(4) EUTMR, which states:

Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for shall not be registered where and to the extent that, pursuant to Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the EU trade mark, or the date of the priority claimed for the application for registration of the EU trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Recently, the EUIPO rejected the opposition.

Background

On 9 October 2021, Tesla held its ‘Gigafactory Berlin County Fair’ at the site of the Gigafactory in Grünheide near Berlin. In the course of this event, Elon Musk briefly announced Tesla’s intention to sell ‘Gigabier’ by saying “and we’re even gonna have a beer”. In the background, the bottle design was displayed (see pictures below). A video of the announcement is available here.

One day after this event, on 10 October 2021, Juicyphant GmbH (‘Juicyphant’) filed for registration of EU trade mark no. 018574565 ‘Gigabier’ for

· ‘Beer and brewery products’ in class 32,

· ‘Alcoholic beverages (except beer)’ in class 33, and

· ‘Beer brewing for others’ in class 40.

Tesla filed an opposition on the basis of an earlier non-registered trade mark ‘GIGABIER’ under Art. 8(4) EUTMR for ‘beer and beer-based beverages’ in Denmark and Ireland.

Tesla submitted inter alia:

· Online articles from Danish and Irish websites, which concerned Tesla’s plans to build the Gigafactory near Berlin and which were all published prior to the application date of Juicyphant’s trade mark. The word ‘GIGABIER’ was not mentioned in any of those articles.

· Online articles from German and English websites, which were published on or after the application date of Juicyphant’s trade mark or were undated, and mentioned Elon Musk’s announcement of ‘GIGABIER’.

· Social media posts of private individuals, five of which dated from 9 October 2021, e.g.

 

· Screenshots of YouTube videos taken during the Gigafactory Berlin County Fair showing the bottle design, which were published on 9 October 2021, e.g.

EUIPO’s decision

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.

Relevant factors for this assessment are the duration and intensity of the use of the sign as a distinctive element for the relevant public, namely purchasers, consumers, suppliers and competitors. The use in advertising and commercial correspondence is of particular relevance. The condition of use in the course of trade must be assessed separately for each of the territories in which the right is supposedly protected. The earlier sign’s use must have occurred before the application date of Juicyphant’s EU trade mark.

The Opposition Division found that the evidence did not provide a convincing picture of use of the sign ‘GIGABIER’ prior to the application date of Jucyphant’s EU trade mark in Ireland or Denmark. The evidence did not allow the assessment of the potential degree of recognition of Tesla’s mark.

Elon Musk’s mere announcement of Tesla’s intention to produce ‘GIGABIER’ was not considered to constitute ‘prior use in the course of trade of more than mere local significance’.

The YouTube videos on Elon Musk’s announcement neither show the public’s recognition of the ‘GIGABIER’ nor a real and actual presence on the market. The number of viewers and their geographical origin on 9 October 2021 was unclear and, in any event, the views were not sufficiently high. It was also not helpful that a few Danish and Irish individuals attended the Gigafactory Berlin County Fair.

The Opposition Division summarised:

the evidence does not show that this single announcement by the opponent during a brief event at the new factory plant in Brandenburg, one day prior to the filing of the contested application, was followed by or attracted the attention of a substantial part of the relevant public in Ireland and/or Denmark. Therefore, the opponent has clearly failed to prove that its use of the sign in the course of trade in Ireland and/or Denmark prior to the relevant date was of more than mere local significance in those territories.

Comment

This case shows the importance of IP protection, regardless of whether you are a small startup or a global multi-billion dollar company. It would have been advisable not just to register the trade mark ‘GIGABIER’ prior to the announcement but also the rather iconic bottle-shape, at least as a design, but also as a 3D trade mark.

Despite the challenges that Art. 8(4) EUTMR presented here, this appears to be a case of bad faith given the conspicuous sequence of the events.

Interestingly, Tesla’s German trade mark application for ‘Giga Bier’ (filed on 11 October 2021, i.e. one day after Juicyphant’s EU trade mark application), was initially rejected by the German Patent and Trade mark Office for lacking distinctiveness. ‘Giga’ was considered to be laudatory, like ‘mega’, to denote an exceptional and important product. Upon appeal, the German Patent Court disagreed and considered the trade mark to be sufficiently distinctive. It held that the term ‘giga’ only refers to a large size but does not have other laudatory meanings. Beers in large bottles are usually advertised as ‘XXL beer’ but not by using the word ‘giga’.