Automobile Club de L’Ouest (ACO) were recently successful in the Intellectual Property Enterprise Court (IPEC) after Deputy Judge David Stone ruled that Omologato Ltd had infringed several of ACO’s registered trade marks featuring the phrase ‘LE MANS’ and representations of the layout of the Le Mans track. Amongst other goods and services, ACO’s marks are registered against class 14 goods such as “timepieces” and “watches”, which are also Omologato’s main offerings, with Omologato also using “LE MANS”, “LM” and “LMR” signs in the course of its trade.
Omologato did not attend trial but forwarded several defences to infringement nevertheless, such as relying on previous sponsorships of drivers and teams in previous Le Mans races, a reliance on its own “LMR” registration, which was ultimately invalidated in the course of the proceedings, and reliance on section 10(6) of the Trade Marks Act 1994, a comparative advertising defence which was repealed in 2019.
ACO was successful in pleading sections 10(1), 10(2)(a) and 10(2)(b), each in the alternative to one another, and 10(3). Consequently, the matter will turn to a damages inquiry, where, given ACO’s reportedly timely compliance with the Civil Procedure Rules throughout the claim in contrast to Omologato’s failure to adequately particularise any defences, it seems likely that ACO will expect to achieve a substantial damages award. Omologato’s director was also held as jointly liable for having designed and named the infringing watches with prior knowledge of the Le Mans marks and reputation, as well as owning the invalidated “LMR” registration in his own name.
If you have any questions on the above, or if you need any advice or support in respect of your own intellectual property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
