The European Union Intellectual Property Office (EUIPO) recently decided in opposition proceedings that the two figurative international trademarks “TESLA” do not have priority over our client’s EU word mark “Teskyer”. In this respect, there was no likelihood of confusion. The opposition proceedings were conducted in English.
The opponent based his opposition against our client’s EU word mark “Teskyer” on the two international trademarks “TESLA” (No. 1 251 407 and No. 1 251 408), both of which are figurative. In the first case, the word “TESLA” is represented with white letters against a black background and in the other case with black letters against a white background. The word “TESLA” is legible in each case.
The EUIPO rejected the opposition in its entirety at the opponent’s expense. In the EUIPO’s view, the marks “TESLA” and “Teskyer” are different from each other. The word “Tesla” designates a derived SI unit of measurement for magnetic flux density. Moreover, the word refers to the person Nikola Tesla. The word “Teskyer”, on the other hand, is a purely invented word that has no special meaning.
According to EUIPO, it is true that consumers often look at the beginning of a mark and that the marks in dispute each begin with ‘TES-‘ and ‘Tes-‘ respectively. In this case, however, the word endings of the marks in question are so different that consumers will not be subject to any likelihood of confusion. Visually and phonetically, the marks in dispute would also be distinguishable from each other. The fact that the goods protected by each of the marks are virtually identical then no longer changes the fact that the marks in dispute as a whole are not likely to be confused.
The owner of the two international trademarks “TESLA” did not appeal against the EUIPO’s decision.