As previously reported in February 2020, Dr. Georg Jacobs and Marcel Maybaum successfully enforced the partial cancelation of a Union trademark at the EUIPO on behalf of a Swiss company. The company manufactures Tesla plates and distributes them itself and through third parties in Germany and elsewhere. One of the company’s competitors had registered the term “Tesla plate” both as a Union trademark and as a German trademark and asserted trademark claims against the company and several of its competitors on this basis.
Dr. Georg Jacobs and Marcel Maybaum applied for the cancelation of these trademarks because the term “Tesla Plate” describes energy plates per se, which can be traced back to a receiver of free energy invented by Nikola Tesla in 1901. “In this sense, the term “Tesla Plate” is used nationally and internationally to describe such energy plates and cannot be registered as a trademark,” said Dr. Georg Jacobs.
The EUIPO, which is responsible for Union trademarks, initially rejected the application for cancelation, but largely granted it in response to an appeal filed by the Heuking lawyers. The trademark owner appealed against this decision to the CJEU. In the meantime, the German Patent and Trade Mark Office (DPMA) followed the EUIPO’s view and also ordered the partial cancelation of the trademark owner’s German “Teslaplatte” trademark. An appeal against this decision is possible.
If the decisions of the EUIPO and DPMA become legally binding, the term “Tesla plate” may continue to be used for such energy plates by anyone – just like free energy itself.
Counsel to Swiss company
Heuking Kühn Lüer Wojtek:
Dr. Georg Jacobs, LL.M. (Lead),
Marcel Maybaum (both IP), both Düsseldorf