Formula One literally in the fast track

Shalini Bengani has been contemplating a curious instance in which a fast-track litigation procedure has been invoked by an enterprise that is more closely associated with fast tracks than almost any business in the world.  The fast-track procedure in this instance was operated by the busy bees at the United Kingdom's Intellectual Property Office, and the business in the fast track was none other than Formula One itself.  The procedure involved a trade mark opposition: the opposed mark was published for opposition shortly before Christmas last year, on 13 December; the Hearing Officer's decision is dated 8 September.  That's far too slow for proceedings in which neither party sought leave to file evidence, this Kat thinks, but still pretty good going.  Anyway, let Shalini take up the tale of this opposition:

Formula One blocks TEAM F1 trade mark

Motor racing is in the news a lot these days and it's not just the first Formula Eevent, held in Beijing, that has hit the headlines in recent times.  Formula One has seen plenty of action too, this time in the arena of trade marks. Richard Lowther’s Application: Opposition by Formula One Licensing BV (Case O/396/14) was decided last month by Hearing Officer Chris Bowen in the UK Intellectual Property Office. This is what it's all about: Lowther applied to register the alphanumeric trade mark TEAM F1 for "Application software; Computer game software; Games software; Software; Computer software programs" in Class 9.  Formula One opposed, citing its earlier Community trade mark F1 for a list of computer- and software-related goods in Class 9 goods which included the term “computer software [recorded]”.

Formula One opposed, relying on Section 5(2)(b) of the UK Trade Marks Act 1994 [= Article 4(1)(b) of the Trade Mark Directive and Article 8(1)(b) of the Community Trade Mark Regulation] which states:

“A trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”

Formula One objected that not only was the distinctive element of applicant’s mark F1 identical to their CTM, but also that the goods covered were identical and/or similar, emphasising that the similarity was accentuated by the enhanced distinctiveness and cachet of the F1 mark, garnered through its substantial and long-standing use.

Lowther agreed that the competing goods were identical or similar, but denied the basis of the opposition, maintaining that the only similarity between the competing marks was the conjunction of the sixth letter of the alphabet and the first number in the sequence of numbers; however, it was the conjunction of two equally important elements TEAM and F1which rendered his mark distinctive. Lowther was clearly not impressed with the notion that F1 was highly distinctive. In his view it was nothing more than an abbreviation of the words "Formula One" -- which were merely generic and/or descriptive of a particular form of sport, this being the top class of single-seater auto racing sanctioned by the Fédération Internationale de l’Automobile. Moreover, the term was used in everyday parlance to denote that type of racing, predating both the establishment of the FIA Formula One World Championship and Formula One’s use of the term.

The Hearing Officer held that the competing goods were identical based on the principle enunciated in Case T-133/05 Gérard Meric v OHIM, [which the IPKat couldn't find on the Curia database, searching both by name and by case number. Does anyone have a copy or  a link?] in which the General Court stated that the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark. On this principle, Formula One’s specification in Class 9 “computer software [recorded]” would encompass all of Lowther's goods. 

The Hearing Officer then held that average consumers of computer software consisted both of members of the general public and business users selecting software on behalf of a commercial undertaking. Such consumers are most likely to select the goods from a range of retail outlets on the high street, catalogues and online. In this selection process, visual considerations play an integral part. However, as the selection of such goods may raise technical considerations such as compatibility with existing hardware and software, aural considerations (where a member of the public seeks guidance prior to purchase) are also likely to feature in the selection process, though to a somewhat lesser extent than visual considerations. 

Given the obvious importance of selecting the correct software for the purpose required and since the purchase of software is likely to be sporadic, a member of the general public is likely to pay a relatively high degree of attention when selecting software. However, bespoke software bought by business users for specific business purposes will be the subject of discussions and demonstrations with a range of software providers before capital outlay is authorised, which paves the way for aural considerations to come into play. While business users may have a better understanding of the software they require, the likely importance of the selection in a business context, combined with what may be the not insignificant sums in play, suggests that a business user is likely to pay at least an equivalent level of attention to that of a member of the general public and, in many cases, probably considerably higher, when choosing software.

What does this mean on the facts of this opposition? Given the presence of the word TEAM as the first element of Lowther's mark, the Hearing Officer said that the degree of visual and aural similarity between the competing marks was "reasonable" [note for those who read English as a second or subsequent language: the word "reasonable" carries a second meaning in colloquial English, which is broadly equivalent to "having some degree of substantiality". Thus a cup of tea can be said to be "reasonably" hot without the implication that it is reasonable for the tea to be hot. Much the same usage is found with the word "fairly", which need not imply any degree of fairness.  Thus one can speak of someone's conduct being "fairly unscrupulous" without any sense of contradiction]. 

The Hearing Officer continued that, given that these were fast-track proceedings in which neither party had sought leave to file evidence, there was no evidence to assist him one way or the other and he could not therefore reach any conclusion as to what conceptual message, if any, was conveyed by the respective marks as a whole to the average consumer. The inclusion of the word TEAM as the first element of Lowther's mark was sufficient to avoid the likelihood of direct confusion, where one trade mark is mistaken for the other. But what of a likelihood of indirect confusion, given what might be the weak distinctive character of the earlier mark and the at least relatively high degree of attention that would be paid to the selection of the goods at issue? Even though Lowther’s mark consisted of two elements which contributed to its overall distinctive character, bearing in mind that identical goods were involved, the presence of the word TEAM in his mark was insufficient to establish that the average consumer would not assume that Lowther's goods were those of Formula One or of a commercially-related economic undertaking. In reaching this conclusion, the Hearing Officer was guided by the CJEU’s decision in Case C-235/05 L’Oréal SA v OHIM (FLEXI AIR), which addressed the risk that consumers would believe that the slight difference between the signs reflected a variation in the nature of the products or stemmed from marketing considerations rather than assuming that the difference denoted goods from different traders. Accordingly the opposition based on section 5(2)(b) of the Act succeeded in respect of all of the goods for which Lowther sought to register his mark, and the application was refused.

This a laudable victory for Formula One Licensing under relative grounds since, back in June 2007, Hearing Officer David Landau had rejected its F1 trade mark application for Class 41 goods on absolute grounds, stating that it was not viewed as a trade mark by the public but that it only enjoyed a monopoly in organising the F1 races and could not be therefore be registered as a trade mark (O/169/07) 

 Shalini's other recent guest post on UKIPO proceedings can be read here.
Eric the Cat in the fast track here