Tesla -v- Tesla Chicken & Pizza – considerations for your Trade Mark

Tesla recently applied to the UK Intellectual Property Office, to invalidate Mr Ali’s registered trade mark ‘Tesla Chicken & Pizza’. Tesla argued that it has such an established reputation (even in dissimilar goods and services) that the registered mark would take unfair advantage of it and further, that the mark was registered by Mr Ali in bad faith.

The UKIPO ultimately agreed with Tesla, cancelling the trade mark and Mr Ali (the owner of the ‘Tesla Chicken & Pizza’ mark) was Ordered to pay Tesla the sum of £4,000.00 for its costs (https://www.ipo.gov.uk/t-challenge-decision-results/o111523.pdf).

This serves as a stark reminder to brand owners to consider their applications to register a trade mark carefully, before proceeding and also, to cautiously consider their use, even after registration. In this instance, Tesla did not oppose Mr Ali’s application at the point of registration, as it could have done when it was published in the trade mark journal on 3rd May 2020. However, just because a trade mark is registered, does not mean that it cannot come under threat during its lifetime. Any party can apply to invalidate a trade mark, even once it is registered, on the basis of (for example) bad faith. Here, Tesla applied to invalidate the trade mark on 14th September 2022, some years after registration. Tesla argued that Mr Ali’s trade mark was applied for in bad faith in that he either filed the application with an intention to use the mark to ‘free ride on the coat-tails’ of Tesla, or to ‘block its entry into the restaurant market and ultimately, to unfairly extract financial consideration for handing the mark over’. Any brand owner looking to register a trade mark within the UK needs to carefully consider whether any other trade marks exist, which are identical or similar to your trade mark, and which are being used for identical/similar/dissimilar services. Even owners of trade marks trading in dissimilar services can successfully oppose or revoke a trade mark if that owner has such reputation, that use of the other mark would take unfair advantage or, or be detrimental to the reputation of the earlier mark. If you do not consider those risks carefully before you apply to register your trade mark, you could become embroiled in expensive and time consuming litigation in the UK Intellectual Property Office, and potentially find yourself liable to pay the other owner’s costs, as well as your own. Forethought to those risks is paramount before you press on with your application.

If you require assistance with your trade mark and any applications, or you find yourself embroiled in opposition/revocation proceedings within the UKIPO, please do not hesitate to contact our IP expert, Gabriella Shepherd on 0330 058 5222.

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