F1 protection goes off the track before the General Court

European Union
In Formula One Licensing BV v Office for Harmonisation in the Internal Market (OHIM) (Case T-10/09, February 17 2011), the General Court has upheld a decision of the Board of Appeal of OHIM refusing an opposition filed by Formula One Licensing BV against an application to register the mark F1 LIVE. 

Racing-Live SAS applied to register the device mark F1 LIVE as a Community trademark for various goods and services connected with Formula 1 in Classes 16, 38 and 41 of the Nice Classification:

Formula One Licensing successfully opposed the application, relying on earlier registrations for the word mark F1 and the device mark shown below covering the same classes:

Racing-Live successfully appealed the decision. The Board of Appeal ruled that, even though the goods and services were identical or similar, there was no likelihood of confusion due to the differences between the marks. It held that:
  • the relevant public perceived the combination of ‘F’ and ‘1’ as a generic designation of a category of racing cars, and by extension, of races involving such cars; and
  • the reputation of the earlier trademarks concerned only the ‘F1’ element of the F1 logo.
Formula One Licensing applied to the General Court to have the Board of Appeal’s decision annulled, arguing that:
  • the board did not properly take into consideration the identity and similarity of the goods and services;
  • the board incorrectly presumed that ‘F’ and ‘1’ would not be perceived by the public to be a trademark;
  • since ‘F1’ is the dominant element in the contested mark, there was a high degree of similarity; and
  • there was a likelihood of confusion between the marks.
The General Court held that the board was correct in making a distinction between 'F1' as a word and 'F1' as part of a device. The Board of Appeal held that, over the past 10 years, Formula One Licensing had promoted only the F1 device and that, when granting licences, it emphasised the device by issuing strict rules on its usage. However, such rules were not imposed on the usage of other versions of F1.

Formula One Licensing did not dispute the board’s conclusion that 'Formula 1' (and by extension 'F1') is commonly used in everyday language to designate, in generic terms, the sport of motor racing, and the General Court concluded that 'F1' is just as generic as 'Formula 1'.

The General Court held that the board was right to find that the registrations for the letters 'F1' had only a weak distinctive character and that the reputation of the mark was linked to the F1 device and not the word mark.

The General Court considered that consumers will not connect the 'F1' element in the mark applied for with the earlier F1 marks. The only sign consumers will associate with Formula One Licensing is the F1 device and this mark is too different to the F1 LIVE device mark for there to be any likelihood of confusion between the two.

The decision emphasised that the validity of the F1 registrations was not in issue, but there was a clear implication that the board considered the term to be generic (and so potentially vulnerable to revocation).

This decision has serious implications for Formula One Licensing’s ability to control the use of (and maintain its registrations for) the F1 name. It emphasises the importance of rights holders ensuring that the use made of their trademarks does not render them generic.
 
Mark Holah and Natalie Clare, Field Fisher Waterhouse LLP, London

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