Bejing No. 3 Intermediate Court accepted three intellectual property cases relating to Tesla Company. Merchant Zhan from Guangdong registered “TESLA” trademark as early as in 2006. This triggered the trademark dispute with Tesla Company. 

 

The head office of Tesla Engine Co., Ltd. (“Tesla Company”) is located in USA. It established in China Tuosule Auto Sales (Beijing) Co., Ltd. 

 

In Sep. 2006, merchant Zhan from Guangdong already applied to register No. 5588947 “TESLA” trademark on such commodities as 12 classes of automobile, etc. and was allowed for registration in Jun. 28, 2009. Zhan also used relevant label in its commodity production and sales. 

 

  In Mar. 2013, Tesla Company made an application to the Trademark Bureau for withdrawal for being out of use for three years with respect to No. 5588947 “TESLA” trademark; in Apr. 2013, Tesla Company made a disputing application to the Trademark Review Commission with respect to that trademark, requesting to withdraw that trademark. 

 

  In Sep. 3, 2013, Tesla Company lodges two actions against Zhan to Beijing No. 3 Intermediate Court, asserting respectively that Zhan had infringed copyright and constituted improper competition. Tesla Company asserted that it enjoyed copyright to relevant label, requesting the court to make a judgment that Zhan, et al stopped such infringement and published a statement to eliminate influence and indemnified RMB 1.10 million yuan and RMB 3.10 million yuan respectively for infringing copyright and improper competition. 

 

  On Jun. 30, 2014, Zhan lodged an action to Beijing No. 3 Intermediate Court for trademark infringement against Tesla Company, Tuosule Auto Sales (Beijing) Co., Ltd., requesting the court to make a judgement that Tesla Company and Tuosule Company stopped selling “TESLA” brand electric motor vehicles immediately, apologized and indemnified economic loss for RMB 23.94 million yuan. 

 

Beijing No. 3 Intermediate Court released news saying that a series of intellectual property cases relating to trademark, copyright, improper competition, etc. concluded. The parties came to reconciliation eventually. 

 

On Aug. 7, 2014, Tesla published a statement saying that Zhan undertook to waive the use of such labels as “T E SLA”, etc. This also means that Tesla has indisputable ownership and use right to its trademark in China. 

 

After this case, the Tesla domain name dispute case, the administrative case of “T E S L A” trademark withdrawal for being out of use for three consecutive years, the administrative case of “T E S L A” trademark invalidity announcement that other courts were trying had also been settled in a package. 

 

The Tesla trademark fighting case to which much attention was paid realized a smooth reconciliation after less than one month from intervention by Beijing No. 3 Intermediate Court. The fierce trademark fighting between both parties had concluded in peace until this point. This is highly out of external expectation. 

 

Legal personages said that this might relate to modification to Trademark Law of PRC last year. According to relevant regulations in the new Trademark Law, trademarks being out of use for three consecutive years can be ordered by the Trademark Bureau to correct within limited time or cancel for registration.