General Court issues new decision in long-running F1 dispute

European Union

In Formula One Licensing BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-10/09 RENV), the General Court has found that the mark F1-LIVE was confusingly similar to the mark F1. This is the second time that this case has been decided by the General Court. Its prior decision in Case T-10/09 had been set aside by the Court of Justice of the European Union (ECJ) in Case C-196/11 and the case had been sent back to the General Court, whose judgment had been eagerly awaited.

The dispute goes back to a Community trademark (CTM) application filed in 2004 for the mark shown below:

Formula One Licensing BV opposed the application based on earlier national and international trademark registrations for the word mark F1 and a CTM registration for the device mark F1 FORMULA 1 for identical and similar goods and services. The opposition was upheld. The applicant appealed, and the Board of Appeal of OHIM refused the opposition, stating that the relevant public perceived 'F1' as a generic designation of a category of racing car and, by extension, of races involving such cars, and that there was no likelihood of confusion.

Formula One Licensing brought the matter before the General Court. In its judgment of February 17 2011, the General Court confirmed the decision by the Board of Appeal. Dissatisfied with the judgment, Formula One Licensing appealed to the ECJ and succeeded in having the General Court’s decision set aside. The ECJ found that the General Court had erred in finding that the sign F1 was generic, descriptive and devoid of any distinctive character. On the contrary, in its judgment of May 24 2012 (Case C-196/11) the ECJ pointed out that it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark that forms the basis of an opposition. The case was then referred back to the General Court.

Having been told by the ECJ that the validity of the earlier national F1 marks should not be called into question, it was up to the General Court to consider whether it would still be possible to find that there was no likelihood of confusion.

Formula One Licensing claimed that:

  • there was a likelihood of confusion between the mark applied for and the word mark F1;
  • it was necessary to acknowledge that the word mark F1 has a certain degree of distinctiveness;
  • it could not be found that the F1 sign is generic, descriptive or devoid of any distinctive character, as this would call into question the validity of the earlier trademark registrations which would be contrary to the Community Trademark Regulation (207/2009); and
  • the F1 mark had a reputation.

The crucial aspect of the case was the coexistence between national trademarks and CTMs. In the new decision of December 11 2014, the General Court referred to the decision of the ECJ and pointed out that a finding that a sign identical to a national (or international) trademark lacks distinctive character would be detrimental to national trademarks identical to that sign. The registration of such a sign as a CTM would be likely to eliminate the national protection of those national marks and this would not respect the system of coexistence of CTMs and national marks.

Instead, if there is a need to challenge the validity of a national or international trademark in a member state, this should be done through cancellation proceedings brought in that member state.

The General Court went on to discuss the issue of similarity of the marks F1-LIVE and F1, noting that there were elements that distinguish the marks from each other, but there was also a certain degree of overall similarity between the marks due to the inclusion of the element 'F1' in the mark applied for. Having to acknowledge at least a minimum degree of distinctiveness, the court stated that the element 'F1' had only a weak distinctive character, and pointed out that this did not preclude a finding that, in the circumstances, there was a likelihood of confusion.

After a lengthy analysis, the General Court found that a likelihood of confusion among consumers could not be ruled out. Because the earlier mark F1 was reproduced identically in the mark applied for, consumers would interpret the mark F1-LIVE as a variant of the earlier mark. Accordingly, the decision by the Board of Appeal was annulled. The question of the reputation of the opponent’s mark was not examined.

The new decision seems to be in line with the tendency in earlier Community case law to give weak national marks a strong - some would say too strong - protection in opposition proceedings. While this practice may be in keeping with the coexistence of CTMs and national marks, it might lead to undesirable results in some cases. Relying on this practice, a purely generic national trademark registered a long time ago - perhaps without a thorough assessment of its distinctive character or using an outdated national practice - may be capable of preventing the registration of a CTM containing that generic element.

In similar situations, applicants should consider filing a cancellation action at the national level against the national (or international) trademark registration that forms the basis of an opposition if the mark is of borderline distinctiveness.

It will be interesting to see which impact, if any, the implementation of the European Trademark and Design Network’s Common Communication on the Common Practice of Relative Grounds of Refusal – Likelihood of Confusion (Impact of non-distinctive/weak components) of October 2 2014 will have on future decisions involving weak marks.

Lisbet Andersen, Aumento Law Firm, Copenhagen

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