Formula One Licensing fails to prevent registration of F1H20 mark

Singapore

In Formula One Licensing BV v Idea Marketing SA ([2015] SGHC 263), the High Court has dismissed the appellant’s case on all grounds and held that the respondent’s application could proceed to registration.

On January 11 2007 the respondent, Idea Marketing SA, applied to register the mark F1H20 in Singapore.

The appellant, Formula One Licensing BV, commenced opposition proceedings to stop the registration. Notably, the appellant attempted to rely on the plain F1 mark, which was registered on May 10 2007 - ie, after the relevant date of January 11 2007. The appellant contended that the plain F1 mark was an earlier trademark prior to January 11 2007, as it was a well-known trademark. It also claimed to have enjoyed goodwill in the plain F1 mark prior to January 11 2007.

The opposition was heard by the assistant registrar of trademarks on September 30 2013, and the opposition failed on all grounds. The appellant appealed to the High Court for leave to adduce further evidence. The case was then remitted for a re-hearing before the same assistant registrar on January 20 2015, and the decision was maintained. The appellant then appealed to the High Court against the assistant registrar’s decisions.

Justice Tay Yong Kwang of the Singapore High Court agreed with the assistant registrar that the plain F1 mark represented a particular standard for class or standard of sport in both motor racing and powerboat racing, and was therefore descriptive of a class of sport. Several news articles referred to the different tiers of motor sport races, including 'F2' and 'F4', with 'F1' being the highest tier.

Tay J also agreed with the assistant registrar’s findings that the relevant sector of the public would associate the plain F1 mark with either the appellant’s motor races and the respondent’s power boating championship, as the relevant sector would have been exposed to both at the same period of time. The respondent’s evidence showed that it had held its powerboating championships in Singapore in September 2005. Meanwhile, the appellant’s evidence also showed that the appellant’s motor races held overseas were broadcasted in Singapore at around the same time. Referring to the High Court case of Société des Produits Nestlé SA v Petra Foods Ltd, Tay J agreed with the respondent’s submissions that mere association of 'F1' with the appellant was insufficient to show distinctiveness as a trademark - what is required was that the use of 'F1' must establish, in the perception of the average consumer, that the product originates from a particular undertaking. As the relevant sector could associate the plain F1 mark with either the appellants or the respondents as at January 11 2007, Tay J held that the plain F1 mark had not acquired distinctiveness as at January 11 2007.

As such, Tay J upheld the assistant registrar’s finding that the plain F1 mark was not distinctive and therefore could not be a well-known trademark that could be considered to be an earlier trademark for the purposes of the opposition.

Tay J further held that the evidence tendered by the appellant did not show how well known the plain F1 mark was in Singapore as at January 11 2007. News articles adduced by the appellant attesting to the worldwide popularity and fan base of F1 were held to be too general to support a finding that F1 was well known to the relevant sector of the public in Singapore. Coupled with the earlier findings that the plain F1 mark was descriptive and that the relevant public could associate the plain F1 mark with either the appellant or the respondent, it was unclear what F1 was well known for.

The appellant also contended that it had acquired goodwill as at January 11 2007 through its use of the plain F1 mark. Tay J referred to previous case law and held that goodwill must attach to a business in the jurisdiction. However, certain types of pre-trading activity will also be recognised and it must be shown that there is an unequivocal intention to enter the Singapore market. In this regard, Tay J held that there was insufficient evidence to support a finding that the appellant had acquired goodwill in the plain F1 mark prior to January 11 2007. The appellant had yet to commence business in Singapore, as its first 'F1' night race took place in Singapore only in 2008. In addition, the appellant did not have evidence of its sales, or of the marketing and advertising expenses incurred. While there were articles showing the promotion and marketing of F1-branded merchandise, Tay J found that they were generating demand for other parties’ products and not those of the appellant. As goodwill was not established, the appellant’s ground of opposition under passing off was dismissed.

The appellant also relied on three prior registrations in the opposition:

However, Tay J agreed with the assistant registrar that the mark applied for was dissimilar to each of the three registered marks.

Tay J opined that, in the years since the start of the appellant’s annual night races in Singapore in 2008, it could perhaps be said that the plain F1 mark had become distinctive of the appellant in Singapore - especially as it had been a few years since the respondent’s last powerboating championship was held in Singapore (in 2011). However, for the purposes of this opposition proceedings, the findings had to be based on the evidence before the relevant date of January 11 2007 - that is, before the commencement of the F1 night races in Singapore.

As such, based on the evidence adduced by the parties that fell within the relevant period, Tay J agreed with the decision of the assistant registrar and dismissed the appellant’s case on all grounds, allowing the respondent’s application to proceed to registration.

Regina Quek and Kwee Yi Jia, One Legal LLC, Singapore

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