Formula One Licensing Crashes Out in TM Opposition

Roaring out of the Pits this morning, the General Court (the artist formerly known as the Court of First Instance) handed down its judgment in Case T-10/09 Formula One Licensing BV v OHIM (available from the curia website here).

The facts are straightforward: the following mark was applied for in respect of goods and services “relating to the field of formula 1” in Nice Classes 16, 38 and 41 (including Magazines, Books and Pamphlets and their communication and dissemination electronically).

The application was opposed by Formula One Licensing (FOL), who alleged a likelihood of confusion for the purposes of Art 8(1)(b) and (5) of the CTM Regulation with two of its earlier marks, the word mark “F1” and the figurative mark (the 'F1' logotype) reproduced below.

The “F1” word mark was the subject of three registrations of note: (i) international registrations in Denmark, Germany, Spain, France, Italy and Hungary, in respect of goods and services in Classes 16, 38 and 41, covering, inter alia, the goods and services covered by the mark applied for; (ii) registration in Germany for services in Class 41 (‘Conducting of sporting events’); and (iii) registration in the UK for goods and services in Classes 16 (‘Paper, card, cardboard, printing, painting and drawing sets; catalogues’) and 38 (‘Telecommunication services; electronic transmission of data, images and sound via computer terminal and networks’).

The 'F1' logotype (a CTM) was registered in respect of goods and services in Classes 16, 38 and 41, covering inter alia the goods and services covered by the mark applied for.

FOL also claimed its marks possessed enhanced distinctiveness on account of their use.

The Article 8(1)(b) objection

The Board of Appeal had found that the relevant public would perceive the combination of the letter ‘F’ and the numeral ‘1’ as an abbreviation of ‘Formula One’, and that this would be seen as descriptive of a category of racing car and, by extension, of races involving such cars. It had also found that the relevant public may perceive the ‘F1’ element of the F1 logotype as the trade mark that the applicant uses in relation to its commercial activities in the field of Formula 1 motor racing, and that it was therefore necessary to distinguish between the ‘F1’ element as a word (a simple combination of a letter and a numeral) and the sign F1 as a logotype.

Accelerating down the first straight, the General Court considered that the Board’s conclusion must be endorsed [39]. It explained that the evidence before it made clear that FOL had, for more than 10 years, only promoted the F1 logotype and had strictly enforced rules relating to its use. The same could not be said, however, for the “F1” element in other forms. Moreover, the public was aware that “F1” was a common abbreviation for ‘Formula 1’, which designated a type of racing car and races involving them. It was also aware that ‘Formula 1’ is commonly used in everyday language to designate a category of racing car and, by extension, races involving such cars (facts not disputed by FOL). The General Court accordingly concluded (at [44]) that: “This means that the abbreviation ‘F1’ is just as generic as the term ‘Formula 1’.” Therefore, while noting that the validity of an international or national trade mark could not be called into question in proceedings for registration of a CTM, the Court considered that the he public would not generally consider a descriptive element forming part of a compound mark as the distinctive and dominant element of the overall impression conveyed by that mark. Contrary to FOL’s arguments, the ‘F1’ element was considered not to have a particularly pronounced distinctive character.

Comparing the ‘F1’ word marks with that applied for, the General Court was of the opinion that there was some phonetic similarity: the addition of a striking extra word in the mark applied for counterbalancing, to some extent, the common element ‘F1’. There was also some (weak) conceptual similarity – “the addition of the word ‘LIVE’, which suggests the reporting or broadcasting of an event in ‘real time’, makes [the mark applied for] conceptually richer than the earlier marks”. However, the Court did not consider that there was a likelihood of confusion as: (i) consumers had only learnt to connect the ‘F1’ logotype with FOL; and (ii) consumers would, in any case, “regard ‘F1’ in ordinary typeset as an abbreviation of ‘Formula 1’ – that is to say, as a description”.

Moving on to a comparison with the ‘F1’ logotype, the Court noted that the Board had been correct to highlight the particular visual differences between the marks and to conclude that the degree of similarity between them was therefore low. Taking an overall view, it concluded that there was, again, no likelihood of confusion as:

[61]“the fact that the public attributes a generic meaning to the sign F1 means that it will understand that the mark applied for concerns Formula 1, but, because of its totally different layout, the public will not make a connection between that mark and the activities of the applicant.”

The Article 8(5) objection

Rounding the final bend, the General Court considered that the Article 8(5) objection was similarly flawed. FOL’s only mark for which evidence of use had been shown was the ‘F1’ logotype, and this was not considered to be sufficiently similar to the applied for mark to ground an objection under the Article. The Court explained:

[67] “The distinctive character and the reputation of the logotype sign lie in the virtual fusion of the letter ‘F’ and the numeral ‘1’, presented in sharply contrasting colours. The sole fact that the letter ‘F’ and the numeral ‘1’ are present in the mark applied for – a presence which has no distinctive character – is insufficient to support the inference that there is a link between the two marks. Consequently, notwithstanding a certain phonetic and conceptual resemblance, the Board of Appeal’s finding that no element of the mark applied for reminds the public of the F1 Formula 1 logotype must be upheld, since the two signs cannot be regarded as similar.”

Therefore, having had a race plagued by unscheduled pit stops, FOL's hopes finally came crashing to an end when the wheels fell off and it ploughed into the tyre barrier...

However, what do readers think: similar or not?