F1 Trade Mark Opposition Action Stalled on Appeal

The General Court (Eighth Chamber) recently dismissed an opposition appeal by Formula One Licensing BV against the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) in the registration of F1H20.

Background

Idea Marketing SA obtained an international registration via WIPO in the European Community for the word mark F1H20.  The goods and services were registered in classes 9, 25, 38, and 41 and relates to sunglasses and spectacles, clothing, footwear and headgear, broadcasting by radio and television and education, training and entertainment respectively.

Formula One Licensing BV filed an opposition based on a host of earlier international, community and national marks in classes to which the marks were registered on the grounds that due to the identity with, or similarity to the earlier marks, and the goods or services covered by those marks, there would exist a likelihood of confusion on the part of the public in the territory to which the earlier trade mark is protected.

The opposition at first instance, and later on appeal, was rejected on 20 April 2011 and 14 June 2011 respectively.

The grounds for rejection on appeal were based on there being no likelihood of confusion between the two marks.  The Board of Appeal held that the conceptual differences between the two marks were sufficiently different so as to discount the weak visual and phonetic similarities.

Appeal to the General Court

In appealing the Board of Appeal's decision, Formula One License BV sought to annul the contested decision and seek payment of their costs.  In contrast, the opposition, OHIM and the intervener sought the action dismissed and Formula One License BV be ordered to pay their respective costs.

Formula One License BV claimed that the Board of Appeal had made an incorrect assessment in finding that there was no likelihood of confusion between the earlier word and figurative mark and the mark.  In relation to the figurative mark Formula One License BV maintained that the Board of Appeal was wrong in finding that the distinctiveness of the earlier mark was in its figurative structure and not in the alpha numeric elements.

The General Court found in favour of the opposition and held that no likelihood of confusion existed between the mark in suit and the earlier word marks, even in the circumstances in which the goods or services were identical.  In relation to the figurative marks, it was held whilst there was a weak phonetic similarity, there were visual or conceptual similarities between the earlier marks and the mark.

In relation to Article 8 (5) of Regulation 207/2009 and the opposition of a mark registered for goods and services that the earlier proprietor's mark is not registered towards, but enjoys a reputation which the mark in suit would be taking unfair advantage of, or be detrimental to, the distinctive character of the earlier mark, it was held that the applicant had failed to provide proof of reputation of the earlier word marks relied on.

In relation to the earlier figurative marks, it was held that the earlier marks and the mark in suit were visually and conceptually dissimilar and as such the relevant public would not establish a link between the signs at issue and the article 8 (5) provision was dismissed

As a final insult Formula One License BV was ordered to pay the costs of OHIM and the intervener.