The European Union Intellectual Property Office (EUIPO) recently denied Tesla's application to register the "ROBOTAXI " trademark for vehicles and services related to autonomous transportation.
The term is associated with the company's autonomous mobility project, which plans to deploy a network of driverless vehicles for passenger transportation. However, the Office has determined that the "Robotaxi" mark is descriptive of the goods and services for which registration was sought.
This decision is particularly relevant in a context where emerging technological concepts (such as autonomous driving) give rise to new terms that are quickly incorporated into everyday language. In such cases, the line between a term that can be registered as a trademark and a purely descriptive term can be decisive for the protection of intellectual property assets.
Background of the Case
To understand the EUIPO's decision, we must take the following applications into account:
- Robotaxi Ltd filed EU trademark application No. 013813167 for “ROBOTAXI” (March 11, 2015) to designate: Car rental; Vehicle rental; Transportation by rental car; Car rental; Taxi services; Passenger transportation; Taxi services; Provision of rental vehicles for passenger transportation. This trademark was granted on October 21, 2015, without opposition.
- Subsequently, Monsieur ZOUBIER HARBAOUI filed an application for French trademark No. 716940, “ROBOTAXI” ( on December 30, 2020), for classes 9, 12, 39, and 42. This registration was granted on June 2, 2021.
- Testa, Inc. recently filed for EU trademark No. 019171190, “ROBOTAXI,” covering goods in Class 12 (Land vehicles; electric vehicles, namely automobiles; automobiles; and structural parts therefor) and services in Class 39 (Leasing of motor vehicles; transportation and storage of automobiles; transportation of passengers and goods; coordinating travel arrangements for individuals and groups, namely, arranging time-based ridesharing services for individuals and groups; vehicle rental services; vehicle sharing services, namely, arranging and coordinating the temporary use of vehicles; transportation and delivery services, namely, monitoring, managing, and tracking the transportation of persons and the delivery of goods and packages; conveyance rental and sharing services, namely, arranging and coordinating peer-to-peer vehicle sharing and rental services).
Decision
In this case, the EUIPO has rejected the application because it considers the sign “ROBOTAXI” to be descriptive of the goods and services claimed. Specifically, it considers that the relevant public will perceive it as a“taxi driven by a robot; an automatic, unmanned vehicle intended for personal transportation.”
Testa, Inc. appears to have argued in its defense that the Office has accepted very similar marks—some of which were even filed by the same applicant—and that the Office must ensure that comparable cases are decided in a comparable manner, unless an objective and factual distinction justifies a different outcome.
However, the EUIPO notes that “decisions regarding the registration of a sign as a European Union trademark (…) are made in the exercise of defined powers and are not a matter of discretion.” Consequently, the registrability of a sign as a European Union trademark must be assessed in accordance with the provisions of the EU Trademark Regulation and not based on the Office’s prior practice.
Also keep in mind that market practices, languages, and examination practices evolve over time, and some of the trademarks cited were accepted because, at the time of their application, they were considered registrable, even though that is no longer the case today.
Conclusion
The EUIPO has rejected the application for the ROBOTAXI trademark on the grounds that it is descriptive, but it should be noted that this is not inconsistent with previous decisions, since:
- It is not bound by previous decisions, whether by the EUIPO itself or by other offices (such as the French one).
- The criteria used in previous applications do not necessarily align with the criteria currently applied, since language usage changes over time.
Elzaburu and Trademark Consulting
Protecting distinctive marks in emerging technology sectors requires a careful analysis of the requirements for registrability, particularly with regard to distinctiveness and the risk that a term might be considered descriptive of the goods or services it identifies.
At Elzaburu, we advise domestic and international companies on the development of trademark registration strategies, the monitoring of trademark portfolios, and the defense of their rights before trademark offices and courts.
Marta Rodríguez, Associate Partner in the Trademark Practice Group at Elzaburu.