Legal Updates

Intellectual Property – Trademarks – Formula 1 – Sports Law - Community Trademarks

In the case of Formula One Licensing BV v Office for Harmonisation in the Internal Market (Trade Marks and Designs)(OHIM) [2011], the court ruled that there was no similarity between the trade marks.

Racing-Live SAS, applied for a Community Trade Mark (CTM) application in April 2004, for the figurative mark F1. In May 2005, a notice of opposition was filed against the CTM application on the basis that there was a likelihood of confusion within the meaning of art 8(1)(b) of the Regulation (now art 8(1)(b) of the 2009 Regulation) as there were three earlier registrations for the FI logo.

In 2007, the application for the CTM was rejected by OHIM on the grounds that identical and/or similar goods and/or services were provided under the marks and there was a likelihood of confusion within the meaning of art 8(1)(b) of the Regulation on the part of the public. The applicant appealed against this decision.

In October 2007, the First Board of Appeal of OHIM allowed the appeal, and ruled that identical and/or similar goods and/or services were provided under the marks, there was no likelihood of confusion between the trade marks as there were obvious differences between them. The applicant appealed to the General Court of the European Union, claiming that it should annul this decision asserting that there was a likelihood of confusion between the marks.

The General Court of the European Union ruled:

• The First Board of Appeal was correct in finding there was no confusion between the mars as an overall assessment of the likelihood of confusion between the marks revealed that there was a lack of visual similarity and only limited phonetic and conceptual similarities between them, since the relevant public would not confuse the marks.
• Therefore, the fact that the public attributed a generic meaning to the sign F1 meant that it would understand that the mark applied for concerned formula 1, but, because of its totally different layout, the public would not make a connection between the mark and the activities of the applicant.

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© RT COOPERS, 2011. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.