TRADEMARK | The EUIPO Cancellation Division invalidates ‘TESLA’ trademark for bad faith

On 17 December 2024, the EUIPO Cancellation Division issued its decision in case C 56 966, and declared the EUTM ‘TESLA’, filed by Capella Eood (Capella), invalid for bad faith. Following on from an application by Tesla Inc. (Tesla), the Division held the trademark at issue invalid for bad faith under Article 59.1(b) of Regulation (EU) 2017/1001. It deemed its registration to be part of a strategy involving speculative filings aimed at obstructing legitimate registrations and extracting settlements, with no intention of genuine use. The Division identified key indicators of bad faith, according to established case-law, including (a) Capella’s awareness of Tesla’s reputation, (b) a pattern of speculative filings, (c) a lack of genuine commercial use of the trademark and (d) procedural tactics to obstruct opposition proceedings. The decision reinforces the EUIPO’s established case-law on bad faith in trademark registration.

Newsletter n. 103 – January 2025