CANCELLATION No C 39 220 (INVALIDITY) 

 

Gruppo Indivisibile Srl, Loc. Ponte alla Chiassa, 150, 52100 Arezzo, Italy (applicant)

 

a g a i n s t

 

Christian Schneider, Leichlingerstraße 4b, 51379 Leverkusen, Germany  (EUTM proprietor), represented by Rainer Buttron, Harry-Blum-Platz 2, 50678 Cologne, Germany (professional representative).

On 08/06/2021, the Cancellation Division takes the following

 

 

DECISION

 

 

1.	The application for a declaration of invalidity is upheld.

 

2.	European Union trade mark No 16 428 906 is declared invalid in its entirety.

 

3.	The EUTM proprietor bears the costs, fixed at EUR 630.

 

 

REASONS

 

On 25/10/2019, the applicant filed a request for  a declaration of invalidity against European Union trade mark No 16 428 906 Piastra Tesla (word mark) (the EUTM), filed on 13/06/2017 and registered on 23/10/2018. The request is directed against all the goods covered by the EUTM, namely:

Class 5: Pharmaceuticals for therapeutic purposes, medical preparations, pharmaceuticals and other pharmaceuticals for medical purposes; Products for use in alternative treatment methods for internal and external use; Natural medicines; Remedies for promoting the vitalisation, filtration and/or treatment of water and other liquids and/or foodstuffs on a parascientific basis, all of the aforesaid goods included in class 5.

Class 6: Common metals and their alloys, Aluminium, Aluminum foil paper, Plates of anodised, dyed, gold-plated or silver-plated aluminium (included in class 6).

Class 10: Medical technology apparatus, diagnostic apparatus for medical purposes, medical apparatus and instruments, included in class 10; Metal plates, in particular aluminium plates for therapeutic application to the body for medical purposes; Apparatus for converting vibrations in the bioenergy information field (bioresonance, electroacupuncture); Medical technology equipment, instruments and apparatus, including bioenergy measuring apparatus, in particular bioenergy radiating apparatus of metal for medical purposes, including for use in alternative treatment methods.

Class 14: Jewellery, precious stones; Horological and chronometric instruments; Jewellery made of glass, Precious stones; Craft articles of precious metals and/or precious stones; Precious metals and their alloys, not included in other classes.

The applicant invoked Article 59(1)(b) EUTMR.

Preliminary remark

The grounds of the application

The applicant ticked the box in the application for a declaration of invalidity to indicate that the application was based on only one ground, that of bad faith under Article 59(1)(b) EUTMR. The application was then notified to the proprietor who then submitted observations in reply, some of which refer to the application as being based on other absolute grounds of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR. In its reply the applicant then brings up the ground of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR and submits arguments and evidence in order to back up the claim and also relies on the ground of bad faith under Article 59(1)(b) EUTMR. However, the applicant must indicate the grounds on which it bases its application when it submits its application as per Article 12(1)(b) EUTMDR. It cannot then extend the grounds of the application at a later date. The applicant did not submit any observations attached to the application form in which it mentions the second ground but only introduces this at a later date.

Invoking a new ground at a later stage would have to be considered an inadmissible extension of the application. The Cancellation Division is not entitled to allow a broadening of the scope of the cancellation request. Once the cancellation request is filed, the earlier rights and grounds on which it is based and the goods and services against which it is directed cannot be extended. The same considerations apply as in opposition proceedings. Even less can such an extension be permissible in view of the fact that the pendency of cancellation proceedings prevents parallel proceedings before EUTM Courts and they result in decisions with res iudicata effect, Article 128(2) and Article 63(3) EUTMR (see decision of Fourth Board of Appeal R 1517/2007-4 of 21/12/2009, paragraph 20).

In the application form, in the box entitled ‘explanation of grounds’ under the heading of the ground of bad faith, it states ‘E' STATA GIA' INVIATA TUTTA LA DOCUMENTAZIONE IN CARTACEO. Numero di pratica di nullità assegnata: 000036647C’. However, it did not translate this into the language of proceedings, English and Italian is not the other possible language it could have filed the application in, the first language of the EUTM being German and the second being English and the box was ticked to indicate that English was the chosen language of proceedings.

The Office may consider facts and arguments filed by the applicant in support of the application only if they are submitted in the language of the proceedings. The Office will not request the applicant to send a translation; it has to send one on its own initiative. Article 15 (3) EUTMDR states that where the translation required under the second subparagraph of Article 146(7) Regulation (EU) 2017/1001 is not filed within a period of one month of the date of filing an application for revocation or a declaration of invalidity, the Office shall reject the application for revocation or for a declaration of invalidity as inadmissible.

Furthermore, it is worth noting that even if it had been translated it makes reference to another case but did not specifically identify what evidence it intended to rely on, and according to the Office’s Guidelines it should specify (1) the number of the opposition it refers to; (2) the title of the document it refers to; (3) the number of pages of this document; and (4) the date this document was sent to the Office in order to be able to identify and rely on that evidence. Furthermore, there does not seem to be any reference to these additional grounds in the other file. Therefore, the Office will not take into consideration the additional grounds of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR pleaded at a later date. The examination will only continue in relation to the ground of bad faith under Article 59(1)(b) EUTMR.

 

Restitutio in integrum

The proprietor was initially invited to submit observations in reply to the applicant on or before 30/05/2020. The proprietor did not submit any observations before the end of the time limit. On 05/06/2020, that is after the time limit had ended, the proprietor requested a two week extension in which to submit its observations. On 08/06/2020 the Office notified the proprietor that its request for an extension of the time limit was rejected as it was requested after the time limit had already expired. On 26/06/2020 the proprietor submitted a request for restitutio in integrum according to Article 104 EUTMR as due to the pandemic shutdown its office was rarely opening and it did not have time to reply to the 450 pages submitted by the applicant, most of which were in Italian and not translated into English. It further stated that the time limit was not properly noted in its calendar as it fell on a Saturday and the following Monday was a holiday and non-working day in the office. The Office considered this request and on 04/09/2020 it notified a decision granting the request for restitutio in integrum pursuant to Article 104 EUTMR received on 26/06/2020 and the proprietor’s observations were accepted. The applicant submitted observations and evidence on 06/07/2020 and 09/11/2020 to show that the proprietor had been working and submitting observations in the ongoing German proceedings and argued that if it could submit the observations there it could also have done so in the present case.

A party to proceedings before the Office may be reinstated in its rights (restitutio in integrum) if, in spite of all due care required by the circumstances having been taken, it was unable to meet a time limit vis-à-vis the Office, provided that the failure to meet the time limit had the direct consequence, by virtue of the provisions of the regulations, of causing the loss of any right or means of redress.

Therefore, there are two requirements for restitutio in integrum (25/04/2012, T-326/11, BrainLAB, EU:T:2012:202, § 36):

 a) that the party has exercised all due care required by the circumstances; and

 b) that the non-observance (of a deadline) by the party has the direct consequence of causing the loss of a right or means of redress.

Rights will be re-established only under exceptional circumstances that cannot be predicted from experience (13/05/2009, T-136/08, Aurelia, EU:T:2009:155, § 26) and are therefore unforeseeable and involuntary. Errors in the management of files caused by the representative’s employees or by the computerised system itself are foreseeable. Consequently, due care would require a system for monitoring and detecting any such errors (13/05/2009, T-136/08, Aurelia, EU:T:2009:155, § 18).

The Cancellation Division has serious doubts as to whether the request for restitutio in integrum should have been granted. As pointed out above in the Aurelia judgment a mis-entry of the deadline into the proprietor’s agenda would not generally be acceptable as a valid reason and the applicant has shown that the proprietor was working and submitting observations separately in the ongoing German proceedings so the covid-19 restrictions had not affected its ability to provide observations within certain time limits. However, as these observations have now been accepted as validly filed on time and the contents of the observations do not affect the outcome of the present decision the Cancellation Division will accept them and proceed with the decision, as if it were to revoke said decision of 04/09/2020 it would only prolong the present proceedings unnecessarily and the outcome of the decision would be the same either way. Moreover, as the proprietor is the losing party in the present decision, by taking into account these observations, it is the best light for its case and therefore neither party is prejudiced by the documents being taken into account.

The proprietor’s comment about other earlier marks of the applicant

The proprietor in its observations of 14/01/2020 argues that Office appears to indicate that the application is also based on earlier EUTMs but that it could not find any information on these earlier marks.

However, the application was not based on any earlier trade marks or EUTMs and therefore this argument must be set aside.

The proprietor also argues that the applicant did not submit any arguments in support of its ground of bad faith in the application for invalidity. However, the applicant, in reply to the proprietor, later submitted observations and evidence in support of its case. The applicant may substantiate its case prior to the expiry of the substantiation period, which is the closure of the adversarial part of the revocation or invalidity proceedings (Article 16(1) EUTMDR). Therefore, the applicant has submitted observations in support of its case within the given time.

Furthermore, the proprietor argues that it has made long-standing use of the contested mark and it is also the owner of the German registered trade mark No 302 008 035 403 and EUTM No 11 222 155 for the sign ‘Teslaplatte’ and therefore no bad faith can be assumed as it used its trade marks correctly.

The Cancellation Division notes that the fact that the proprietor owns trade marks, for the same term as in the contested sign, although in different language translations, is wholly irrelevant for the present purposes (moreover it is noted that the EUTM has been found to be invalid in a decision, although the decision is presently under appeal, so it is not yet final). In cases of bad faith the details of the case need to be examined to determine whether the proprietor filed the trade mark in bad faith. The ownership or use of marks does not de facto prove good faith. Therefore, this argument must be set aside also.

The proprietor’s difficulty in viewing the applicant’s observations

On 12/11/2020 the Office notified the applicant’s observations of 09/11/2020, consisting of 105 pages, to the proprietor via eComm. On 03/02/2021 the proprietor informed the Office that it had not received the applicant’s observations. However, following an internal investigation carried out by the technical department of the Office, it was confirmed that the communication was correctly sent and indeed read by the proprietor on 03/02/2021, which was after the expiry of the time limit to reply had ended on 17/01/2021. As such, the observations were deemed to be correctly notified. The proprietor therefore, did not submit any observations in reply within the given time limit and the adversarial part of the proceedings were closed pending a decision to be taken. Therefore, this argument must also be set aside.

Translation of the applicant’s evidence

The applicant submitted evidence in support of its observations and not all of that evidence was in the language of proceedings. However, the applicant is not under any obligation to translate all of the documents and the Office did not expressly request it to do so. Indeed, although some of it has not been translated into the language of proceedings there is enough relevant evidence on file, some partial translations and some pieces of evidence that due to their nature are self-evident and can be understood without any need to translate further. Therefore, the Office considers that the applicant has provided sufficient evidence in the language of proceedings and it will not proceed to request further translations in this respect as it would unnecessarily prolong the proceedings while the outcome of the decision would still be the same. The proprietor argued that as a result of the fact that some of the documents were in Italian it did not have enough time to reply within the given time limit. However, this is not a valid argument as the proprietor could have requested an extension of said time limit before the expiry of the time limit and indeed it could have explicitly requested a translation of the evidence. In any respect, the proprietor was granted restitutio in integrum and its late observations will be taken into account for the reasons already outlined above.

SUMMARY OF THE PARTIES’ ARGUMENTS

 

The case for the applicant

 

The applicant argues that sign “Piastra Tesla” is the Italian translation of the English word “Teslaplate“ and/or “Tesla plate“, or the German word “Teslaplatte”. It is a sign which results from the combination of the last name of Nikola Tesla, “Tesla”, and the Italian word “Piastra” (plate). The combination of the words does not respect the Italian grammar rules because between the two nouns Piastra and Tesla it is not present the preposition “di” (“of” in English). The correct wording in Italian would be “Piastra di Tesla”. However, it does argue that it is descriptive as all of the contested goods include energy plates based on or inspired by the process invented by Nikola Tesla. Furthermore, the sign ‘Teslaplatte’ registered by the proprietor has already been deemed to be non-distinctive and descriptive in the Board of Appeal decision of 15/01/2020, R 247/2019-2. Nikola Tesla was an engineer and inventor born in Serbia in 1856 and his inventions are often characterized by his last name ‘Tesla’. He filed patents for apparatus for the utilization of radiant energy (No 658957) and the method of utilizing radiant energy (No 6859578). The applicant states that Nikola Tesla met Ralph Bergstresser and they became close friends and after Mr. Tesla died, Mr. Bergstresser continued his research on Tesla’s inventions and then created an energy plate aimed at channeling positive energies for the treatment of physical and mental pain which he called ‘Tesla plate’ in honor of his friend. In 1971 Mr. Bergstresser established the company Energy Innovation Products in the USA to start commercializing its Tesla plate goods. He did not patent the goods and they are sold by many producers, sellers and distributors around the world. The applicant states that it has been, since 2016, the worldwide exclusive distributor of Tesla plates (in Italian Piastre di Tesla), the energy aluminium plates, produced by the Serbian company Altes 369-Purpurna Svetlos (formerly ‘Purple Light’). It holds the domain name piastreditesla.it and teslapurpleplates.com on which it sells the goods.

The applicant states that it filed a complaint in February 2017 before the Court of Siena (Italy) against the proprietor and his Italian representative Ms B. for defamation as in an article online Ms. B. had insinuated that the goods of the applicant were counterfeit and this damaged the applicant’s business. Later the a representative of the applicant (Mr. M.) filed a criminal complaint before the competent court in Italy against the proprietor and Ms. B and the Court held for the applicant in its judgment of July 2019 and condemned Ms. B. to pay a fine. After the filing and registration of the contested EUTM the proprietor sent a cease and desist letter to the applicant on 05/06/2019 to stop using the name ‘PIASTRA TESLA’ or ‘TESLAPLATE’/’TESLA PLATE’, which the applicant had used since 2016. Thereafter the applicant filed the present application for invalidity. On 12/11/2019 the proprietor served the applicant a writ of summons before the Court of Dusseldorf (Germany) and used the contested EUTM as a basis in order to stop the applicant using the names ‘Piastre di Tesla’ or ‘Tesla Plate’. These proceedings were still pending at the time of filing observations. It points out that another party already brought a declaration for invalidity against another EUTM of the proprietor No 11 222 155 ‘Teslaplatte’ (the German for Tesla plate’) and it was declared invalid for some goods in Classes 5, 6 and 10 due to its lack of distinctiveness.

It claims that the contested sign is confusingly similar, almost identical, to the applicant’s sign ‘Piastreditesla’ which is the name used, together with the English name ‘Tesla plate’ by the applicant and many other companies in different languages in the EU and around the world to commercialise Tesla Plates. The sign is well known around the world, according to the applicant, to describe a plate: a hard and flat disk, usually made of a heavy material, that is derived from a process invented by Nikola Tesla and therefore the contested sign is descriptive of the goods. It argues that the Board of Appeal decision cited previously (R247/2019-2) has already confirmed that ‘Teslaplatte’, the German translation of ‘Tesla plate’ is non-distinctive and said decision also mentioned the translation of this term into different languages in order to indicate energy plates which are descriptive of the nature of the goods. The applicant submits evidence of different webpages from different companies using the term (in different languages) both prior to and after the filing of the EUTM, and the applicant owns websites, teslapurpleplate.com since 2014 and teslapurpleplates.com since 2017 and piastreditesla.it since January 2016. It states that two former shareholders of the applicant, based on their studies and experience, wrote and published a book in Italy on Tesla plates, their function, production process, results etc., with the title ‘Piastre di Tesla e di Kolzov - Due moderni rimedi di bioenergia’ (Tesla and Kolzov’s plates – Two modern remedies of bio energy’). It also refers to a book published in 1987 which refers to ‘purple plates’ of Tesla. It points out that there are many blogs, articles and examples of international publications and specialist newspaper articles mentioning ‘Tesla plates’, their functions, uses etc.

The production of Tesla plates began in 1971 in Serbia and they are now sold worldwide so the proprietor must have known of the existence of this term which describes the goods and is not used as a trade mark. It provides a list of different companies that have been selling these goods under the same indication in various languages in the EU since well before the filing of the EU. Moreover, it states that the proprietor must have known about the use of the name ‘piastreditesla’ and the Tesla plate sold by the applicant at least from the beginning of 2017 and prior to filing as there had been an exchange of communications regarding the misleading and defamatory use of the images of the applicant’s goods on the proprietor’s website which ended in the criminal lawsuit previously discussed.

Thus the applicant claims that at the time of filing the EUTM the proprietor was aware of the applicant and its use of the name ‘piastreditesla.it’ and the fact that it was selling the goods as a worldwide distributor of the Serbian company. It further points to the private prosecution of the proprietor and his representative in February 2017, prior to the filing of the EUTM, by the applicant. The proprietor had claimed that the applicant was selling counterfeit goods and it damaged the applicant’s business. Moreover, at the time of filing of the EUTM the proprietor was already aware that his other trade mark for ‘Teslaplatte’ was under invalidity for non-distinctiveness. The proprietor was aware that the applicant and many other companies were using the same sign to describe goods they sold and it then carried out a systematic campaign to attack all those who produce and distribute the Tesla plate name in different languages. It claims that the proprietor never had any interest in using the contested mark but only to limit or prohibit the applicant from continuing to use the sign and the proprietor does not even list the sign among its trade marks on the website. It argues that the proprietor wants to prevent anyone else from using the sign to describe their goods on the market. Furthermore it sent cease and desist letters to the applicant and even warned one of the authors of book ‘Piastre di Tesla e di Kolzov’ who was a shareholder of the applicant to refrain from using the name in the book that had been published prior and which is widely known among the relevant and interested public. It has sent further cease and desist letters to other resellers of Tesla plates also and initiated lawsuits in Germany against its main competitors. It has also demanded financial compensation from the applicant and other resellers. Therefore, it concludes that this shows that the proprietor filed the EUTM in bad faith.

In reply to the proprietor’s observations the applicant opposes the request for restitutio in integrum and argues that the proprietor’s observations should not be taken into consideration as it was able to file observations in reply to the German legal proceedings at the same time and therefore could have submitted observations in this case within the time limit. It provides arguments in relation to the ground of Article 59(1)(a) EUTMR in conjunction with Article 7(1)(b) and (c) EUTMR. In relation to the ground of bad faith, it argues that contrary to the proprietor’s claims, it has translated the evidence into the language of proceedings. It repeats and expands its previous arguments and contests the proprietor’s arguments. It claims that the alleged use by the proprietor of the sign ‘Teslaplatte’ is irrelevant as it has now been invalidated and the arguments regarding the use of the sign by his grandfather are also irrelevant as none of these arguments relate to the sign at issue. It claims that even though the Italian courts upheld the claim for defamation by the proprietor against the applicant, the proprietor repeats the offending statements in its observations and claims that the applicant’s goods are counterfeits and this, it argues, shows the dishonest intention of the proprietor and its bad faith. It points out that as the proprietor does not own patents for the goods then the applicant’s goods cannot be counterfeits. It denies the relevance of the fact that the proprietor owned a German mark filed in 2008 for the sign ‘Teslaplatte’. The proprietor has not used the sign after registration but has only tried to prevent others from using it and didn’t own any trade mark for the sign ‘PIASTRA TESLA’ prior to the applicant using the sign. Therefore, it insists that the EUTM has been filed in bad faith.

In support of its observations the applicant submitted the following evidence on 24/03/2020:

 Exhibit 1) Invalidity Application No 36 647 C.

 Exhibit 2) Website www.gruppoindivisibile.it.

 Exhibit 3) Boards of Appeal’s decision in case R 247/2019-2.

 Exhibit 4) Wikipedia excerpt on Nikola Tesla in English and Italian.

 Exhibit 5) Excerpts of the Tesla’s USA patents n. 685,957 and 685,958.

 Exhibit 6) www.zoominfo.com on Ralph Bergstresser.

 Exhibit 7) www.TeslaVital.com - website of EUTM owner in German, Italian and English versions.

 Exhibit 8) Examples of year 2016 sale invoices from Purple Light to Indivisibile s.n.c..

 Exhibit 9) Examples of year 2016 and 2017 sale invoices from Indivisibile to its clients.

 Exhibit 10) www.teslinapurpurnaploca.rs and https://teslinazlatnaploca.rs - website of Altes 369.

 Exhibit 11) www.teslapurpleplate.com - Gruppo Indivisibile website.

 Exhibit 12) Exchange of letters dated February 2017.

 Exhibit 13) EUTM owner’s lawyer “cease and desist” letter dated 05/06/2019.

 Exhibit 14) EUTM owner’s lawsuit started before Court of Dusseldorf.

 Exhibit 15) whois, webhois, eurodns, nic.ch and who.in.rs sites.

 Exhibit 16) A. Miranda e D. Cavallo, “Piastre di Tesla e di Kolzov- Due moderni rimedi di bioenergia”, Io Edizioni, 2017.

 Exhibit 17) L. Goodman, “Star signs”, Pan Macmillan, 1987 and the Italian translation published by editor Armenia, 1988.

 Annexes 18)-23) Website extracts from Sorgentenatura.it, macrolibrarsi.it, ilgiardinodeilibri.it, ilcielodinut.it, 22) Website Idelandia.it and blogpositivo.it.

 Exhibit 24) Hari A.R., “The misterius power of pendulum”. Ramya Mudrana, 2002-

 Exhibit 25) St.Clair Michael, “Light seeds”.

 Exhibit 26) Van Cauwelaert D., “Au-delà de l’impossible”, Plon.

 Exhibit 27) Carlson W. Bernard, “Tesla - Inventor of electrical Age”.

 Exhibit 28) Examples of specialized newspapers.

 Exhibit 29) Website https://www.lifetechnology.com/products/the-tesla-purple-plate-Nikola-tesla-andralph- bergstresser-s-famous-energy-enhancement-device.

 Exhibit 30) Website www.purpleplates.com.

 Exhibit 31) Website www.purpleharmonyplates.com.

 Exhibit 32) Website www.swisstesla.ch.

 Exhibit 33) Website www.philipstul.ch.

 Exhibit 34) Website www.eippurpleplates.com.

 Exhibit 35) Website www.gongoff.com.

 Exhibit 36) Website www.teslina-ploca.rs.

 Exhibit 37) Website www.teslapurpleplate.

 Exhibit 38) Website www.teslinapurpurnaploca.rs.

 Exhibit 39) Website www.originalteslinapurpurnaploca.rs.

 Exhibit 40) Website www.teslinaploca.rs.

 Exhibit 41) Website www.naturesalternatives.com/positive-energy-purple-tesla-harmony-plate-large.html.

 Exhibit 42) Website www.indiamart.com/vedic-research.

 Exhibit 43) Website www.positive-produkte.de.

 Exhibit 44) Website https://atma.hr/iscjeljujuca-sredstva-za-otklanjanje-vasih-zdravstvenih-tegoba-teslinapurpurna-ploca-i-teslin-disk/.

 Exhibit 45) Website http://www.teslinapurpurnaplocaoriginal.com/.

 Exhibit 46) Website https://teslavitalis.com/.

 Exhibit 47) Website https://www.vivrenaturel.com/.

 Exhibit 48) Website https://isachat-shop.com/.

 Exhibit 49) Website https://www.amazon.it/Tesla-Purple-Energy-Plates-Small/dp/B0015HBKJ2.

 Exhibit 50) Website https://www.ebay.com/itm/EIP-Tesla-Purple-Plate-original-best-1-5-disc-EMF-reliefsubtle-energy-/163596872468?oid=163279645787.

 Exhibit 51) Website https://www.ebay.com/p/Tesla-Purple-Energy-Plates-Small-Plate/691195876.

 Exhibit 52) Website https://www.ebay.com/p/EIP-Original-Nikola-Tesla-Positive-Energy-Purple-Plate-Large/20009472296.

 Exhibit 53) Website https://www.ebay.com/itm/Tesla-Purple-Plate-Tesla-Purple-Disc-Positive-Energy-Original/173082256975?hash=item284c81a64f:g:xWIAAOSwlzRaUi1.

 Exhibit 54) Website https://www.ebay.it/itm/Nikola-Tesla-Purple-Plate-11-4-x-7-3-cm-Original-/113225790831.

 Exhibit 55) Website https://www.ebay.it/itm/EMF-Electromagnetic-Fields-Protection-Tesla-Purple-Energy-Large-Plate-12-x-12-/351662701088.

 Exhibit 56) Copy of the private prosecution/complaint of Gruppo Indivisibile dated 02/02/2017 and its relating English translation.

 Exhibit 57) Copy of the criminal charge made by the Public Prosecutor N.Ludovici of the Court of Siena and its relating English translation.

 Exhibit 58) Copy of sentencing decree of the Court of Siena and relating English translation.

 Exhibit 59) Copy of Order disposing the criminal charge issued by Judge R. Malavasi of the Court of Siena.

 Exhibit 60) Gruppo Indivisibile’s clients emails filed at the hearing of criminal case before the Court of Siena and its respective translation.

 Exhibit 61) EUTM proprietor’s lawyer’s letter to Idealandia SRL dated 06/06/2019.

The applicant submitted further evidence on 09/11/2020 which consists of the following:

 Exhibit 62) English translation of Exhibit 3) Board’s of appeal’s decision in case R 247/2019-2.

 Exhibit 63) Copy of the decision of German Trademark Office dated 28/09/2020 and its relating English translation.

 Exhibit 64) Garzanti linguistica in http://www.garzantilinguistica.it/ricerca/?q=piastra.

 Exhibit 65) German- Italian Dictionary in de.langenscheidt.com.

 Exhibit 66) English- Italian Dictionary in dictionary.cambridge.org.

 Exhibit 67) Examples of Italian student’s magazines and books in www.focusjunior.it and www.giuntiscuola.it.

 Exhibit 68) Wikipedia on Tesla Inc.

 Exhibit 69) Copy of EUIPO refusal dated 2014 of EUTM owner’s application for extending the mark “Teslaplatte” to Classes 14) and 21).

 Exhibit 70) Screenshot of supposed counterfeiting plates in https://www.teslavital.com/it/piastre-tesla-esempi-di-contraffazioni/; (Italian) https://www.teslavital.com/en/watch-out-fake-teslaplates-do-not-work/ (English).

 Exhibit 71) Copy paper filed on April 27th 2020 by the EUTM proprietor Mr. Schneider before the Court in Dusseldorf.

 Exhibit 72) Copy paper filed on 08/06/2020 by the EUTM proprietor Mr. Schneider before the Court in Dusseldorf.

The case for the EUTM proprietor

The EUTM proprietor contests the applicant’s arguments. He denies that the sign is descriptive or non-distinctive or that it was filed in bad faith. He states that most of the 450 pages of evidence submitted by the applicant is in Italian and has not been translated and this is what delayed him in replying. The proprietor denies that any of the goods, particularly those in Class 6 are described by the term ‘Piastra Tesla’ or any of the translations of this term into other languages. The word ‘TESLA’ he claims is famous for cars but not for plates of aluminum. Nikola Tesla did not invent any plates made of anodized, colored, gold-plated or silver-plated aluminium or any other of the contested goods. He argues that the correct number of the Tesla patent is 658,957 and its title is Apparatus for the utilization of radiant energy and it discloses the invention for an electric circuit to gain electric energy from radiations such as ultra-violet light, cathodic, or Roentgen rays to charge a conductor. In no place does it mention a plate in the patent and the plates sold by the applicant and proprietor do not have a function to charge people with electricity. He argues that only the use of plates in Class 6 to reconstruct the electric circuit given by said patent could be considered to be descriptive but as a functional part of an electric circuit such a plate should be correctly registered under Class 9. Also the disclosed invention of Nikola Tesla has no purpose in medical area, there is no mention in the patent which points to the idea of healing or wellness through use of the apparatus. He requested information from the Nikola Tesla Archive in Belgrade, Serbia to ask them if there is any evidence that Tesla created such plates and there was no evidence to prove that he did. The contested goods are not comparable to the Tesla turbine, transformer or coil or indeed cars.

The proprietor states that he has used the German translation ‘Teslaplatte’ as a German trade mark since 2008. Prior to that it was used as his commercial designation since 1999. Furthermore, he states that his grandfather established a business producing and selling energy plates in the seventies which had the commercial designation ‘Teslaplatte’ and he carried on this business. He has been selling energy plates named ‘Piastre Tesla’ and ‘Teslaplatte’ for a long time and even before he was represented by Ms. B. in Italy. He claims that from 2016-2017 the applicant was listed as a reseller of the proprietor’s energy plates, but had no dealings with energy plates prior to this. This business relationship was set up by Ms. B, but the applicant was not the only reseller of the proprietor’s energy plates in Italy. Therefore, it denies that the applicant was a worldwide exclusive distributor of Tesla plates since 2016 and it is why the applicant could not register the domain name piastreditesla.it. He claims that the business relationship between the parties needed to be terminated for several reasons which it doesn’t provide but argues that the lawsuits afterwards was the applicant taking revenge on the proprietor for the termination, and that the applicant was selling counterfeit energy plates of the proprietor’s and using the proprietor’s designation and trade mark. The proprietor admits that it sent warning letters to the applicant to demand that it ceased and desisted from further using the EUTM, which is normal practice to protect a trade mark. It denies that this is bad faith.

He refers to the extracts of his website which the applicant submitted and states that even if the ® symbol is not used after the indication ‘Teslaplatte’ or ‘Tesla Plate’ it is use as a trade mark and not a description. It denies the relevance of the other invalidity relied upon by the applicant and the decision of the Board of Appeal in said case R247/2019-2 cited above. He denies that the plates can give cosmic energy to the user. He also denies any similarity between the signs as purple plates is not similar to the EUTM. He points out that the applicant in the other invalidity Mr. S. from Switzerland, although successful against the proprietor in the invalidity, has to cease and desist from using its Swiss mark ‘Teslaplatte’ in the EU by a decision of the Court of Dusseldorf. It points out that some of the evidence of the applicant is from Teslavital.com which belongs to the proprietor so it cannot be relied upon by the applicant. It states that the applicant wrongly refers to the domain teslapurpleplate.com as owned since 2014. The book relied upon by the applicant from 1987 only refers to energy plates as purple plates and the plates invented by Mr Bergstresser were purple but the proprietor invented other plates with different colours of the chakras. They cannot be taken as similar. It denies the relevance of statements from the previous shareholders of the applicant as they are not objective. It claims that only two manufacturers of energy plates are known in the market using the trade marks ‘piastre tesla’ or ‘teslaplatte’ and that is the proprietor and Mr R. in Switzerland and the goods sold by resellers will only come from them and their trade marks will be shown on the resellers websites for this reason. It notes that it has now appealed the Boards’ decision R 247/2019-2 invalidating its other EUTM ‘Teslaplatte’ to the General Court.

In support of its observations it submits the following evidence:

 Exhibit P 1: US Patent No. 685,957.

 Exhibit P 2: Tesla Museum Archive’s confirmation that Tesla did not invent the energy plates.

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 59(1)(b) EUTMR 

 

General principles 

 

Article 59(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark. 

 

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60). 

 

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37). 

 

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven. 

 

One situation which may give rise to bad faith is when a commercial entity has obtained some degree of legal protection by virtue of the use of a sign on the market, which a competitor subsequently registers with the intention of competing unfairly with the original user of the sign. 

 

In such instances, the Court of Justice of the European Union (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 48, 53) has stated that the following factors in particular should be taken into consideration: 

 

(a) the fact that the EUTM proprietor knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM; 

 

(b) the applicant’s intention of preventing that third party from continuing to use such a sign; 

 

(c) the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought; and 

 

(d) whether the EUTM proprietor in filing the contested EUTM was in pursuit of a legitimate objective. 

  

The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 20-21; 21/03/2012, T-227/09, FS, EU:T:2012:138, § 36).

 

The overall assessment of bad faith must bear in mind the general principle that the ownership of a European Union trade mark is acquired by registration and not by prior adoption by way of its actual use. Particularly when the invalidity applicant is claiming rights to a sign which is identical or similar to the contested EUTM, it is important to remember that Article 59(1)(b) EUTMR moderates the ‘first-to-file’ principle, according to which a sign may be registered as an EUTM only in so far as this is not precluded by an earlier mark with effect either in the European Union or in a Member State. Without prejudice to the possible application of Article 8(4) EUTMR, the mere use of a non-registered mark does not prevent an identical or similar mark from being registered as an EUTM for identical or similar goods or services (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 16-17; 21/03/2012, T-227/09, FS, EU:T:2012:138, § 31-32).

 

Assessment of bad faith

 

The invalidity applicant has shown that it and many other companies have used the term ‘Tesla plate’, ‘Teslaplatte’ and ‘Piastra Tesla’ to describe specific types of energy plates and that these goods have been sold all over the EU and around the world for many years. The proprietor argues that Tesla did not hold a patent for energy plates and submits copies of a patent which does not indicate use for energy plates and an email from the Tesla Museum Archive which states that there are no records of Tesla creating an energy plate. However, the applicant has submitted an extract from a book published in 1987 in Exhibit 17 entitled “Star signs”, which at page 316 affirms:

“(…) One of this is a discovery inspired by Tesla, that I call “purple plates”, in absence of a better term. These plates were sent to the Earth from higher dimensions, through the mind and the brain of a man who met Nikola Tesla, and studied deeply his discoveries (…)”).

This book was translated into Italian with the title: “I segni delle stelle” and published in Italy in 1988. From the images of the goods being offered on the different webpages it is clear that many of these goods are purple and that they are energy plates, although the proprietor states that it changed the goods which now have different colours for the different chakras which it claims distinguishes the goods. However, they are essentially still be energy plates but in different colours. The above book excerpt shows that at least in 1987 these goods existed and that there was some relation with these goods and Tesla, even if he or his previous inventions only inspired them but did not directly create them. Clearly there is a beneficial quality to being able to associate goods with the name of Tesla who is well-known for his scientific breakthroughs and knowledge about the utilization of energy for different means. Also in Exhibit 16 there is an extract from the book “Piastre di Tesla e di Kolzov- Due moderni rimedi di bioenergia”, translated as “Tesla and Kolzov’s plates – Two modern remedies of bio energy”. This book was published in June 2017 and written by two of the former shareholders. Although this extract is in Italian and has not been translated, there are many exhibits showing extracts from different websites and publications selling or mentioning goods defined as “Tesla plates” and its various translations into other languages. The use of ‘piastre di Nikola Tesla’ in one of the articles from ‘cielo di nuit’ would indicate indeed that the plates are associated with Nikola Tesla, even if he did not directly invent them, and that this indication is a descriptive indication rather than use of a trade mark. Exhibit 24 consists of an extract from the book “The misterius power of pendulum”. Ramya Mudrana, 2002 in which it describes the characteristics and function of ‘Tesla Plates’ which it claims a persons energy, to provide them with pranic energy from the atmosphere to supply them with energy and which does not lose its intensity. It also provides further books in different languages which use the term ‘Tesla plate’ or its translation into other languages which predate the filing of the EUTM. One further excerpt in English from the book “Tesla, inventor of the electrical age” by W. Bernard Carlson refers to purple plates being used to channel positive energy to address physical and emotional ailments, it discusses the relationship between the inventor Mr. Bergstresser and Tesla. There is an article dated in 2000 entitled “The magic of Tesla’s purple energy plates’ by Corrine de Winter which ties in the purple plates to the Tesla plates, purple just being the color of the Tesla plates while other publications speak of a ‘new alternative healing source for the new millennium experience the power….discovered: lost journals of Nikola Tesla’.

The evidence shows that the term ‘Tesla Plate’ and also specifically the Italian translation ‘Piastre di Tesla’ are used descriptively to describe a type of goods, namely, an energy plate with claimed health benefits. The applicant has shown that it sold these goods itself prior to the filing of the EUTM, although it cannot be said that it owns earlier rights to a distinctive sign for the above mentioned reasons, namely, that the sign was being used by many different companies or people to describe a specific type of good, an energy plate created or inspired by Tesla. The above mentioned book in Exhibit 24 mentions that aluminum plates used for a long period of time in specifically designed energy chambers altered the vibration characteristics permanently and the aluminum sheet would continuously absorb the pranic energy from the atmosphere. It is noted that some of the contested goods are common metals and their alloys, aluminium, aluminum foil paper, plates of anodised, dyed, gold-plated or silver-plated aluminium (included in class 6), in Class 6 and metal plates, in particular aluminium plates for therapeutic application to the body for medical purposes, apparatus for converting vibrations in the bioenergy information field (bioresonance, electroacupuncture); Medical technology equipment, instruments and apparatus, including bioenergy measuring apparatus, in particular bioenergy radiating apparatus of metal for medical purposes, including for use in alternative treatment methods, in Class 10. These goods would describe the type of goods described above or component’s thereof at least. Therefore, this term would be descriptive for these goods at least. The other goods are types of pharmaceuticals, natural remedies etc. in Class 5, medical apparatus and instruments in Class 10 and jewellery, horological and chronometric instruments, precious stones and their alloys etc. in Class 14. Although the sign would not be directly descriptive for these remaining goods it is clear that they have a certain relationship with the energy plates as these goods are touted as having health benefits and can be worn on the user so perhaps some type of jewellery which contains an energy plate etc.

The proprietor was obviously aware of the existence of this term prior to filing the EUTM. This at least has been demonstrated by the fact that the lawsuit between the applicant and the proprietor had begun prior to filing the EUTM and the subject matter therein was a claim that the applicant was selling counterfeit goods of the proprietor, namely ‘Tesla plates’ or ‘Piastra Tesla’ in Italian and ‘Tesla platte’ in German. The applicant submitted exhibit 56 showing the Italian Court proceedings between the applicant and the proprietor dated 02/02/2017, prior to the filing of the EUTM on 13/06/2017. Moreover, the proprietor claims that he has been in the business for many years, although he did not submit any proof of this to back up the allegation, however, even assuming he was, he would have had to have been aware of the other traders using the term ‘Tesla plate’, ‘Piastra Tesla’ and other translations in order to describe the energy plates.

The Board of Appeal in its decision R 247/2019-2, which has been recently confirmed by the General Court in case T-183/20 of 02/06/2021 (not final yet), held that ‘Teslaplatte’ was descriptive for some of the registered goods and this is the German translation of ‘Tesla plate’, although it must be noted that this decision is presently under appeal and thus is not final. Indeed, even if ‘Piastra Tesla’ is not entirely grammatically correct as it should contain the preposition ‘di’ in between the words in Italian, however, it is clearly understood in a descriptive manner as translating to ‘Tesla plate’ in English which describes the goods. As such, the proprietor was aware of the existence of this term as it claims it was involved in this trade for many years and at least it was made aware at the time of the German proceedings prior to the filing of the EUTM. Even so it then attempted to stop other traders from using the sign which they had been using for many years to describe their goods. The proprietor made arguments as to the fact that it is one of only two producers of these goods on the market and that others were merely re-selling its goods. However, it did not submit any evidence to back up this assertion. It claims it holds a German mark for the sign ‘Teslaplatte’ since 2008 but again did not substantiate this claim and even if he does it is irrelevant for the present proceedings as the sign is ‘Piastre Tesla’ which is at issue and, moreover, the Cancellation Division cannot comment on how the German IPO decided to register the sign. There is evidence on file, including books and other publications and also the websites of numerous companies showing the use of the terms ‘Tesla Plates’, ‘Teslaplatte’, ‘Piastra di Tesla’ and other languages as a descriptive indication of the type of goods, namely, energy plates, all prior to the filing of the EUTM. This is further shown by the Italian Court proceedings between the applicant and the proprietor which indicates that at least the proprietor was aware that one other company, namely, the applicant, was using the sign prior to filing the EUTM. However, due to the type of market it is likely that the proprietor would have been aware of the other companies also using the sign in a descriptive manner also.

Even if the contested sign were assumed to be distinctive, it would mean that the use made by the applicant and other companies of the signs ‘Piastra di Tesla’, ‘PiastradiTesla’, ‘Tesla plate’, ‘Teslaplatte’ etc, as demonstrated by the evidence, was prior to the proprietor and that it was aware of such use, at least in the case of the applicant, for the above mentioned reasons. Assuming the distinctiveness of the signs the applicant and many others would hold earlier proven rights than the EUTM (as the proprietor did not submit evidence of its own use as claimed in the observations and the applicant has shown that numerous companies were using the sign prior to the filing of the EUTM to describe energy plates). Moreover, the applicant and other companies were using the signs on different types of energy plates containing aluminum and alleging health benefits for the user. As such, assuming the distinctiveness of the signs they were using the signs for some identical and some related goods to the contested goods.

 

An indication of bad faith may exist if the EUTM proprietor applies for a trade mark which is identical/similar to that of a third party for confusingly similar/identical goods and services and the earlier right is legally protected to some extent and the sole aim of the EUTM proprietor is to compete unfairly by taking advantage of the earlier sign (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 46-47).

 

The EUTM proprietor’s intentions may be an indication of bad faith if it becomes apparent that the EUTM proprietor did not file the contested EUTM in order to use it, but only to prevent a third party from entering the market (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 44). 

 

The same applies if the EUTM proprietor’s only intention is to prevent a third party from continuing to be on the market.

 

Account must also be taken of whether the EUTM proprietor’s filing intentions may be in pursuit of legitimate objectives. 

 

This may be the case, for example, if at the time of filing the contested EUTM, the EUTM proprietor had legitimately already been using the contested EUTM. However, as mentioned, the proprietor has failed to submit any evidence to back up its assertions that it was actually using the mark.

After registering the sign the proprietor began warning parties to stop using the sign or to pay a financial compensation. The applicant has submitted evidence in Exhibit 13 of the proprietor’s cease and desist letter to the applicant dated 05/06/2019 and in Exhibit 61 to another company. The proprietor had taken a descriptive indication of the goods and managed to register the sign and thereafter began to pursue other traders using the descriptive indication to identify their goods and warning them to stop using it, using the EUTM and other marks as a basis for the threat and seeking economic compensation for same. Moreover, the Court in Dusseldorf held that the proprietor had defamed the applicant by stating on its website that the applicant’s goods were counterfeit goods of the proprietor. However, as the court pointed out, the proprietor did not hold any patent over the invention. Even so the proprietor has again made this accusation against the applicant in the present proceedings.

However, as has been shown by the evidence, the proprietor has not only taken a descriptive term but has then attempted to stop the other traders who have been using this term from continuing to use it and demanding financial compensation also. At the time of filing the contested EUTM, the EUTM proprietor knew that the mark was descriptive; the EUTM proprietor has shown its intention of preventing third parties from marketing goods/services under the descriptive mark by filing various infringement proceedings and use of the contested EUTM will restrict the freedom of third parties in marketing comparable products (03/12/2009, R 1743/2007-1, VESUVIA, § 78-82). 

 

The fact that the EUTM proprietor has proposed financial compensation is also a possible indication of bad faith. Although a proposal for financial compensation, even when considerable, does not by itself establish bad faith on the part of the EUTM proprietor at the time of filing the contested EUTM (01/02/2012, T-291/09, Pollo Tropical chicken on the grill, EU:T:2012:39, § 88).

 

The wording of Article 59(1)(b) EUTMR does not require that the invalidity applicant has an earlier right; therefore, in principle, an earlier right is not required in order to find bad faith.

 

Moreover, the Court has recently stated in its judgment of 21/04/2021, T-663/19, MONOPOLY, EU:T:2021:211, § 43 the following:

Where EUIPO finds that the objective circumstances of the particular case which were relied on by the applicant for a declaration of invalidity may lead to the rebuttal of the presumption of good faith which the proprietor of the mark at issue enjoys when he or she files the application for registration of that mark, it is for the proprietor of that mark to provide plausible explanations regarding the objectives and commercial logic pursued by the application for registration of that mark.

The ground of bad faith applies where it is apparent from relevant and consistent indicia that the proprietor of an EUTM filed its application for registration not with the aim of engaging fairly in competition, but with the intention of undermining the interests of third parties, in a manner inconsistent with honest practices, or with the intention of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark, in particular the essential function of indicating origin (12/09/2019, C-104/18 P, STYLO & KOTON (fig.), EU:C:2019:724, § 46).

Therefore, from the evidence submitted by the applicant and which has not been rebutted through evidence by the proprietor, it is clear that the proprietor was aware of similar signs or the fact that the sign was a descriptive indication of the goods being energy plates and their components and filed the EUTM to then prevent others from continuing to market their goods and demanding financial compensation. It even wanted a reference to the book published in 2017 prior to the filing of the EUTM to edit out the use of the descriptive term ‘Tesla plates’ or ‘Piastra Tesla’ from the book. The Cancellation Division considers that the proprietor as such filed the EUTM in bad faith. As mentioned some of the goods which the applicant (and other companies) were using under the indication ‘Tesla plate’, ‘Piastra tesla’ etc., are identical to the contested goods and the other goods are at least related in that they could be used in combination thereof. Therefore, the Cancellation Division considers that the bad faith applies to the entirety of the contested goods.

Conclusion

 

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested goods.

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

 

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

 

According to Article 109(7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and, therefore, it did not incur representation costs.

 

 

The Cancellation Division

 

Michaela SIMANDLOVA

Nicole CLARKE

Pierluigi M. VILLANI

 

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.