Cars and Model Numbers – the drive to protect trade marks

Two different car companies in two different parts of the world are currently fighting to protect their trade marks in vehicle model numbers.

In Europe, Audi AG has started a proceeding against NIO, a Chinese automobile manufacturer. Audi has a number of its model numbers registered as trade marks. Two of these are S6 and S8 and are used as model designations for two of its performance vehicles.

NIO specialises in electric vehicles, or EVs, and after launching in Norway in 2021, is looking to extend its reach in the European market including Germany, Audi’s home country. What has prompted the proceeding is NIO’s intention to offer a 7 seater ES8 SUV and a smaller ES6. Audi claims that the use by NIO of these model numbers will infringe Audi’s rights in its trade marks.

Closer to home, in Australia, General Motors LLC, found itself having to oppose an application by Laser Cleaning Machines Australia Pty Ltd to register “gmsv”. Laser Cleaning Machines was incorporated on 28 October 2020 by two brothers who said that they were passionate about motor racing and muscle cars. The “gmsv” mark was said to stand for “Genuine Muscle Special Vehicles”. Laser Cleaning Machines applied to register the mark in relation to articles of clothing such as baseball shirts, football shirts and rugby shirts, and also in relation to various types of stationery items.

General Motors argued that the GM house mark was central to the success of its business. In 1987, the Holden Special Vehicles (HSV) business was established in Australia. The merchandise program was central to the HSV brand and included apparel, accessories and model cars. SV had been used exclusively from 1988 to 2015 in relation to car models such as SV88, SV188 and SVLE. In 2020, it was announced the Holden brand was being retired in Australia and the focus would be on the growth of its specialty vehicle business. There were media articles about the fact that HSV business planned to operate under the names “General Motors Specialised Vehicles” and “GMSV” and the types of vehicles that might be sold under the brand.

General Motors succeeded in its opposition on the ground that the application to register “gmsv” had been made in bad faith. The Delegate considered that the evidence showed Laser Cleaning Machines was likely aware of GM’s intentions regarding GMSV and that this motivated it to file the applications. The evidence didn’t demonstrate that Laser Cleaning Machines had any capacity to produce motor vehicles or trade in motor vehicles accessories or merchandise. Also, the company name suggested it was formed to trade in cleaning products and this was supported by General Motor’s’ evidence.

Back to the Audi case, and one question that might arise is whether NIO is actually using its model numbers as trade marks or as a descriptive style name because they are easier to remember than a longer sequence of numbers. It will be interesting to see whether NIO tries to argue along these lines in its defence against Audi.

As this case continues, car enthusiasts and trade mark attorneys around the world are awaiting the outcome with much interest.

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