Audi v. Nio: Likelihood of confusion between car models
In the trademark dispute concerning the names of the car models, Audi was successful against the Chinese car manufacturer Nio before the Regional Court of Munich I. On Thursday, 19.01.23, the court prohibited NIO from continuing to advertise the ES 6 and ES 8 models. This was because there was a risk of confusion with the model names of the Audi S6 and S8.
Audi v. Nio: Trademark dispute over names of car models
NIO sells the e-cars under the names ES6 and ES8 so far in China and also in Norway. On NIO's website, two of its cars are advertised with the company name and the addition "ES 6" and "ES 8". NIO plans to launch these cars in Germany.
Audi sued NIO for injunction and damages in October 2021. Audi is invoking its own S6 and S8 models, which Audi has protected as registered trademarks for many years. S6, for example, has been registered as a European word mark since 1996, in Nice Class 12 (motor vehicles and their constructional parts) and 37 (repair and maintenance of motor vehicles). Audi claimed likelihood of confusion with regard to its S6 and S8 trademarks.
Munich Regional Court: Likelihood of confusion between car models
The Munich Regional Court I confirmed the likelihood of confusion in its decision of 19.01.2023. The additional letter E used by Nio in its model designations does not ensure sufficient distinctiveness, the court ruled.
Letter E as part of the trademark
The letter "E" is currently ubiquitous as an abbreviation for "electric"/"electronic", explained the District Court of Munich, especially in the automotive sector (keyword "e-car") and the so-called "e-mobility". There was a danger that consumers would assume that the "ES 6" was the "S 6" in the electric version and that the two vehicles were from the same manufacturer.
The two marks would be associated at least phonetically, which would lead to an indirect likelihood of confusion, taking into account the average distinctiveness of the trade mark in suit and the identity of the goods.
Motor vehicle models are to be compared as a whole
Nio argued that the Chinese cars were SUVs, whereas the Audis in question were sedans. But in vain. And Nio wasn’t able to convince by the fact that not only the car models ES6 and ES8 are shown in the challenged advertisement, but Nio's company name also.
In the automotive sector, it is common to regard car models as independent brands in the sense of secondary trademarks, the court explained. The principle that brands are to be compared as a whole then applies. This principle is also confirmed by further case law. For example, the OLG Frankfurt ruled that when it comes to a model name in sales offers in catalogues or on the internet, the offer must be considered in its entirety (OLG Frankfurt 2020, 6 U 94/17).
Audi v. Nio: Likelihood of confusion in model names - for now
The court upheld Audi's action and prohibited Nio from continuing to advertise the models named ES 6 and ES 8 (LG München I, 1 HK O 13543/21).
This decision is not yet legally binding. According to the press agencies, a Nio spokesperson had already announced before the judgement was announced that Nio would probably appeal.
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