General Court: F1 word marks do not have a reputation in the Community

European Union

In Formula One Licensing BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-55/13, May 21 2015), the Eighth Chamber of the General Court has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had rejected the opposition filed by Formula One Licensing BV against the European part of the international trademark F1H2O.

On April 16 2008 Formula One filed an opposition against Idea Marketing SA's international registration for F1H2O (No 925 383), which designated the European Union and covered goods and services in Classes 9, 25, 38 and 41. The opposition was based on the earlier word marks F1 and the earlier figurative marks F1 (depicted below), which covered a wide range of goods and services:

 

The opposition was based on the grounds that there was a likelihood of confusion between the marks and that use of the mark F1H2O would take unfair advantage of the reputation and distinctive character of the earlier marks.

On April 20 2011 the Opposition Division rejected the opposition. On June 14 2011 Formula One appealed this decision. On November 20 2012 the Fourth Board of Appeal of OHIM dismissed the appeal, holding that there was no likelihood of confusion between the marks at issue; it also dismissed the appeal insofar as it was based on Article 8(5) of the Community Trademark Regulation (207/2009).

Formula One brought an action before the General Court. In support of this action, Formula One put forward two pleas in law, the first alleging infringement of Article 8(1)(b) and the second alleging infringement of Article 8(5) of the regulation.

In particular, Formula One argued that, taking into account the identity of the relevant products and services, the Board of Appeal had erred in concluding that there was no risk of confusion. It emphasised that there was a high degree of similarity between the trademarks given that the alphanumeric combination F1 was the dominant/distinctive element in the contested trademark and that 'H2O' should be considered as being negligible since it was descriptive.

Additionally, Formula One submitted evidence in order to show that the F1H2O mark was already being used to promote powerboat racing. It also contested the conceptual analysis made by the Board of Appeal, which had considered that the relevant public would perceive the mark F1H2O as an imaginary chemical formula. Finally, it stated that the Board of Appeal had erred in its analysis of the evidence submitted during the opposition procedure, which clearly proved that the earlier F1 marks had an inherent distinctive character, as well as an enhanced distinctiveness due to their extensive international use. 

The General Court started by analysing whether there was a likelihood of confusion between the earlier F1 marks and the international trademark F1H2O. Its assessment of the visual, aural and conceptual similarity between the marks led it to conclude that, although it was not contested that the goods and services covered by the application were in essence identical to those covered by the earlier F1 marks, and that the trademarks at issue had a weak visual and phonetic similarity, the conceptual difference between the marks offset these similarities.

The court stated that, although the consumer normally attaches more importance to the first element of a trademark (which, in the present case, was the common alphanumeric element 'F1'), this argument could not hold in all cases. In the present case, the court considered that, as the mark applied for could not be broken down into different elements, the relevant public would not give more importance to the 'F1' element than to the 'H2O' element. Therefore, the court found that there was only a weak visual and phonetic similarity between the marks.

Regarding the conceptual comparison, the court considered that the relevant public would perceive the mark F1H2O as an imaginary chemical formula, despite acknowledging that 'F1' was the abbreviation of the expression 'formula one' and was the common term used to designate a type of car races. It considered that the conceptual difference between the marks was sufficient to counteract the weak visual and phonetic similarities.

Hence, it concluded that there was no likelihood of conclusion between F1H2O and the earlier F1 marks, even in respect to those goods that were identical.

As far as the reputation of the earlier marks was concerned, the court confirmed the Board of Appeal’s conclusion that the reputation of the earlier marks related solely to the logotype version of the ‘F1’ word element. Indeed, the court considered that the earlier word marks had not acquired a high level of distinctive character since the reputation stemmed from the figurative elements of the earlier figurative marks and not from the element ‘F1’, which enjoyed a weak distinctive character.

Arguably, the figurative mark F1 represents nothing more than a stylised version of the element 'F1' and does not feature any figurative element. The decision raises some questions regarding the application of the interdependence of factors and some concerns as to the protection granted to marks considered to be weakly distinctive. Moreover, the form in which a word mark is used is also extremely important, not only in terms of the vulnerability of the mark but also when it comes to proving its reputation.  

By failing to recognise the reputation of the F1 mark, the court undeniably granted an enormous edge to Idea Marketing SA, which was given the pole position in this 'race'.

Meriem Loudiyi, INLEX IP Expertise, Paris

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