F1 ends up in hot water: no similarity to F1H2O

Among the trade mark cases of this week, in case T-55/13 the General Court dealt with another dispute (following Case C‑196/11 P, reported by Jeremy here) involving several trade marks of ‘the top class of professional motor racing’, in other words Formula 1.

This time, Formula One Licensing BV opposed Idea Marketing SA’s CTM application for the F1H2O word mark, which sought protection for goods and services in classes 9, 25, 38 and 41, covering in this latter class, among others, ‘sporting and cultural activities’ and ‘direction, management, organization and execution of sporting competitions’.

It based the opposition on its International and UK word trade mark Registrations for the sign F1, and on various International, Community and national figurative trade mark registrations for the F1 and F1 Formula One signs, registered for several goods and services, including among them those in classes 9, 25, 38 and 41 for which the contested application sought protection. Both the Opposition Division and the Board of Appeal rejected Formula One Licensing’s claims grounded on Article 8(1)(b) and Article 8(5) of Regulation 207/2009. In particular, the Board of Appeal found that the earlier word marks were visually and phonetically similar to a low degree to the contested application and did not share any conceptual similarity. Basically, the F1H2O sign would be perceived in its entirety and not as composed of the elements ‘F1’ plus ‘H2O’, the latter being water’s chemical formula.

Further, while the International Registration for F1 could show no inherent distinctiveness in relation to ‘sporting events or the merchandising thereof’, both the International and UK word mark registrations have a limited distinctive character in connection with the remaining goods and services designated by the CTM application.

Could the use of the F1 sign help acquire a high level of distinctive character? No, said the Board of Appeal, because the reputation could be ascribed only to the figurative elements characterising the earlier figurative marks and not to the element F1 on its own. In any case, there was no similarity between the earlier figurative marks and the opposed application.

It followed that, as for the claim of broader protection based on reputation, the Board of Appeal denied it in respect of the earlier word marks and concluded that the reputation of the earlier figurative marks for certain goods and services could not be relevant as they were not similar to the contested application.

In the appeal to the General Court, Formula One Licensing insisted in two pleas in law respectively entailing the misapplication of Article 8(1)(b) and 8(5) of Regulation 207/2009. The General Court dismissed the action.

First, the General Court observed that the Board of Appeal made no clear reference to the relevant public of the goods and services under comparison. However, the Court deduced that the Board of Appeal endorsed the definition of relevant public as set out by the Opposition Division (i.e. ordinary consumers as well as, in respect of some services in classes 38 and 41, professionals) and it sided with both of them. In any event, the parties did not challenge the finding that the goods and services at issue were identical. Therefor, the likelihood of confusion was excluded in the light of the dissimilarities of all marks involved.

In respect of the earlier word F1 marks, the Court said that the F1H2O application had weak visual and phonetic similarities, as the F1 element was shared by all marks, but they were offset by the conceptual differences between the marks. In that analysis a great importance was given to the fact that the contested application would not be broken down into its F1 and H2O elements. While it would be perceived as a combination of letters and numbers, or as an invented chemical formula, the F1 component did not play an outstanding role either from the visual or phonetic or conceptual point of view. Moreover, the Court agreed with the Board of Appeal’s assessment on the distinctive character of the earlier marks.

Nor were the earlier figurative marks found to be confusingly similar to the contested application, despite a weak phonetic similarity. That was so because the distinctiveness of the earlier figurative marks derived from their figurative elements (and not from the F1 combination), namely that ‘the letter F - is - in capital letters and italics, followed by figure ‘1’ which itself is represented in an original typography with a series of fine horizontal lines that refer to an image of speed’. Where the figurative earlier marks included the additional component ‘Formula 1’, the differences increased as there was no equivalent in the contested application.

The General Court could not apply Article 8(5) either to the word or to the figurative marks: in respect of the former, no proof of reputation was provided by Formula One Licensing; while, in relation to the latter, the General Court excluded that in the mind of the relevant public there was any link between them and the F1H2O CTM application, insofar as it already held that the marks were dissimilar.