Parabolica Limited v Tesla Holding AS

For a UK trade mark application ported from a pending EU application under Article 59(1) of the Withdrawal Agreement, the deemed application date is the original EU filing date for all relevant purposes, including assessment of bad faith. Schedule 2A paragraph 25 of the Trade Marks Act 1994 addresses priority and relative rights, but it does not displace the wider direct effect of Article 59(1) through section 7A of the Withdrawal Act. A later change in the mark’s distinctiveness or generic character can be addressed through invalidity or revocation proceedings. The appeal was therefore allowed and the bad-faith assessment remitted using the EU filing date.

Parabolica Limited appealed from a Hearing Officer’s decision dated 31 October 2025 concerning its UK application for the word TESLA. The application was filed on 14 September 2021 after an earlier EU trade mark application filed on 17 April 2007, with a priority date of 17 October 2006, had remained pending at IP Completion Day.

The opposition succeeded in part under section 5(2)(a) and entirely under section 3(6) of the Trade Marks Act 1994. The appeal challenged only the date for assessing bad faith. The central issue was whether that assessment should be made at the UK filing date or at the deemed EU filing date.

1. Appeal allowed. The Hearing Officer had assessed bad faith at the UK Filing Date. That was the wrong date. The matter was remitted to the Registry for reassessment under section 3(6) using the EU Filing Date.
2. The starting point was that bad faith is assessed when the application is filed. The applicable filing date for a ported application is determined by Article 59(1) of the Withdrawal Agreement, which provides that the UK application is deemed to have the same filing date as the corresponding EU application. The article’s operative wording is wider than its heading’s reference to priority rights.
3. Paragraph 25 of Schedule 2A, read alone, is directed to the date for establishing which rights take precedence and therefore principally addresses priority and relative grounds. It cannot, however, displace Article 59(1), which has direct effect in domestic law through section 7A of the Withdrawal Act.
4. The court’s interpretation was supported by the legislative history, the explanatory materials, the equivalent treatment of pending EU design applications under the Registered Designs Act 1949, and the policy of avoiding materially worse treatment for pending applications than for registered EU marks. A mark becoming generic or non-distinctive later can be addressed through revocation or invalidity under sections 46 and 47 of the Trade Marks Act 1994.
5. The Respondent was to bear its own costs of the appeal, while the Intervenor also bore its own costs. The costs order below was set aside and was to be reconsidered after the further section 3(6) determination.

• High Court, Chancery Appeals: The appeal from the Registry decision was allowed. The bad-faith issue was remitted for reassessment using the EU Filing Date.
• UK Intellectual Property Office: The Hearing Officer’s decision dated 31 October 2025 rejected some relative-ground objections but upheld the opposition under section 3(6) on the basis that bad faith was assessed at the UK Filing Date.