VW has to defend its ‘ID’ name in court

Identytec, a provider of logistics hardware and software, says it has been using the acronym “ID.” in various forms for over 15 years and, starting in March 2013, has registered a large number of trademarks with this initial element. In the press release, the medium-sized company cites the names ID.CONNECTOR, ID.SHELF, ID.TAG, ID.ADD, ID.WEIGH, ID.LASER and ID.TRACK.

“The Volkswagen Group, which was a customer of ours, has itself bought some of our products labeled as such and can hardly claim not to have been aware of the trade mark series with the initial element “ID.”, which picks up on our company name,” reads the Identytec press release. “We were all the more surprised when, in 2020, Volkswagen began to call the new series for electric cars “ID.” and extended this to various vehicle components and the associated technology.” Of course, this refers to the electric models from the ID.3 to the ID. Buzz as well as the wallbox ID. Charger wallbox or equipment features such as the ID. Light.

“As we now know, Volkswagen had already filed trademark applications earlier. In November 2017 – and thus still four and a half years later than our first trademark application – trademarks with the element “ID.” were registered by Volkswagen,” Identytec continues. The company’s attempts to reach an agreement with the Wolfsburg-based company were unsuccessful from the Hildesheim-based company’s perspective, which is why it decided to take the matter to court.

VW kicked off the conflict in 2019

It is a kind of counterattack: in September 2019, Volkswagen filed an opposition against three of the Identytec brands with the Patent and Trademark Office. In the subsequent discussions, VW representatives admitted that they had made a mistake because the Identytec brands are older than those of VW. “In view of (a) this attack by Volkswagen, (b) the disappointment that a former customer is simply appropriating our series brand and (c) the considerable damage we are suffering in the market due to the fact that we can no longer be clearly distinguished as an independent, autonomous provider, we have decided to file a lawsuit,” says Identytec.

The press release states that the company did not originally want to comment on the matter. “For some time now, we have been receiving inquiries from our current and potential business partners as to the relationship between IDENTYTEC and the “ID.” series from Volkswagen. This could give rise to the
assumption that we are imitating Volkswagen’s trademarks not only among circles that were previously unfamiliar with our company and our products. Specifically, some of you speculated that our ID.ADD was a joint project with Volkswagen. Both is incorrect,” it says.

A VW spokesperson told Automobilwoche that the company regrets the legal dispute with a former supplier. The Group is of the opinion that it had “approached the former supplier and plaintiff several times in advance in a constructive manner and with a willingness to talk” – however, the plaintiff side had not accepted VW’s proposal for a settlement. As the Wolfsburg-based company will now present its own legal position in court, it does not wish to comment further on the ongoing proceedings. However, a date for an oral hearing in Hamburg has not yet been set – according to a report in the Frankfurter Allgemeine Zeitung, it could start in late summer.

This means that the car industry is facing the next legal dispute over naming rights for electric cars, unless an out-of-court settlement is reached. Just this week, the Munich Higher Regional Court ruled in favour of the Ingolstadt-based company in the legal dispute between Audi and its Chinese rival Nio, which has now been going on for over two years. In several instances, the question was whether Audi’s trademark rights for models such as the S6 and S8 were infringed by the Nio ES6 and ES8 series due to the risk of confusion.

identytec.de, automobilwoche.de, faz.net (last two in German)