Audi had sued the Chinese start-up Nio for trademark infringement because the model names ES6 and ES8 are too similar to the Audi nomenclature S 6 and S 8. A first judgment agrees with Audi, but the European Patent Office (EUIPO) sees no need for action.
The European Union Intellectual Property Office has objected to Audi's deletion request for the designation of the Nio ES 6 and ES 8 model. According to a report by Automobilwoche and the Chinese media, the EUIPO is said to have failed to comply with Audi's request for deletion in calendar week 8 (February 20 to 26, 2023). The VW brand had already submitted a corresponding application to the office based in Alicante, Spain, in October 2021. The reason: "The application for a declaration of nullity is completely rejected", a risk of confusion between Audi's S6 model and Nios ES6 model is to be denied.
On January 19, 2013, the 1st Chamber for Commercial Matters of the District Court of Munich I saw things differently. In the trademark dispute between the two car manufacturers, the chamber ruled in favor of Audi and prohibited corresponding Nio advertising (1 HK O 13543/21).
There is a risk of confusion
Nio advertised two models on its website with its company name and the series designations "ES 6" and "ES 8" and plans to launch these vehicles in Europe. Audi sees the risk of confusion with the registered trademarks "S 6" and "S 8" in the model designation and called for the omission, the assumption of legal fees and damages.
The court came to the conclusion that there was a risk of confusion "through mental association". According to the court, the company name seen in the advertising is not taken into account for the assessment of the likelihood of confusion, since it is clearly a vehicle type designation "and in the automotive sector it is customary to regard type designations as independent brands in the sense of secondary brands." The principle then applies that marks are to be compared as a whole.
The reasoning for the judgment states:
"Although the [...] design of the defendant company deviates from the plaintiff's trademark "S 6" and " S 8". However, the additional letter "E" does not ensure sufficient distinctiveness in this case. Both brands would be mentally connected, at least in terms of sound, which, taking into account the average distinctiveness of the trademark in suit and the existing identity of the goods, would lead to an indirect risk of confusion.
Der The letter "E" in connection with a product is currently almost ubiquitous as an abbreviation for "electric"/"electronic". The use of the letter affects all areas of life (e.g. the court as an e-file), but especially the automotive sector. The meaning orthe expansion of so-called "e-mobility" is an important social issue. Accordingly, a motor vehicle that has an electric motor is not only referred to as an electric car, but also very often as an "e-car".
The chamber explained that it is therefore to be expected that a not inconsiderable part of the target group [customers; Note d. Red.] understand the "E" [...] to be descriptive and only see it as a reference to the engine type of the vehicle. There is a risk that consumers will assume that the "ES 6" is the "S 6" in the electric version, and that the two vehicles are from the same manufacturer. There is therefore a risk of confusion through connection that goes beyond pure association."
The judgment is not yet final.
Statement from Audi
Audi reacted to auto-motor-und-sport.de: "We welcome today's Judgment of the Munich Regional Court and the associated protection of our brands. As for many other successful companies, these are of central importance to us. Accordingly, we are careful to protect them comprehensively. The judgment confirms that the disputed model designations violate Audi trademark rights.
Many of our models have an iconic character - for us and for our customers. This also and especially applies to our sporty S models. It is therefore a matter of course for us to protect the valuable intellectual property associated with it."
Statement by Nio
At the request of auto-motor-und-sport.de, Nio currently wants to examine the arguments of the court. "We will appeal against the verdict and reserve the right to take further steps accordingly," said a spokesman. Nio's business in Europe is proceeding as planned, with the current focus on the launch of the Nio EL7 and Nio ET5 models, as well as the Expansion of our infrastructure such as the power swap stations.
Nio as a serious competitor
Nio had already reacted in advance and initially only showed the two SUVs in Germany without a model designation. However, both cars have been in China since 2018 (ES8) and 2019 (ES6) on the market. The ET7 is intended for German customers. It is a five-meter-long electric sedan with a range of 1,000 kilometers and a solid-state interchangeable battery. With a system output of 480 kW and 850 Newton meters, the newcomer is courting Porsche Taycan and Tesla Model S customers. But anyone who now thinks that the Nio SUVs are just a Far Eastern mirage should be reminded that the larger of the two has been available in Norway since last year. From the equivalent of around 70,000 euros, customers can get a full-size vehicle with seven seats, air suspension and also a removable battery.Unlike many failed Chinese companies such as Borgward, Qoros or Byton, Nio is establishing itself as a serious competitor. You can find the large ES8, including the model name, in our photo show at the top of the article.
Conclusion
Audi has won the case against the e-car newcomer Nio for infringement of trademark law. According to the first verdict, the model designations of the Chinese SUV models ES6 and ES8 are too close to S 6 and S 8.
