Formula One Licensing BV v OHIM
By Rohan Massey, McDermott Will & Emery. In Formula One Licensing BV v OHIM  unreported, the General Court of the European Union has held that the combination of “F” and “1” would be perceived as an abbreviation of “Formula 1” and descriptive of racing cars and races. Accordingly, there was no likelihood of confusion between the F1 mark and a later figurative mark for “F1 live”.
Racing-Live SAS (which later assigned the application to Global Sports Media Ltd) applied for the following Community trade mark (CTM) covering goods and services in Classes 16, 38 and 41:
Formula One opposed the application alleging infringement of Articles 8(1)(b) and 8(5) of CTM Regulation 40/94/EC (now 207/2009/EC) based on three earlier registrations (International, German and UK) for the word mark “F1” and an earlier figurative CTM, covering goods and services, in Classes 16, 38 and 41.
The Opposition Division of the Office for the Harmonization of the Internal Market upheld the opposition, finding a likelihood of confusion between the marks under Article 8(1)(b). The FirstBoard of Appeal annulled the Opposition Division’s decision and Formula One appealed to the General Court.
The General Court found that the evidence before them showed that Formula One had only promoted the “F1 logo” mark over the last 10 years, not the “F1” word marks. When granting licences, it had only included guidelines on the use of the “F1 logotype” mark. It found that “Formula 1” was used to designate, generically, the sport of motor racing, which the public did not specifically associate with races organised by Formula One, but rather with the top-end category of motor racing generally. The court considered that the evidence also showed that “F1” was a commonly used abbreviation of “Formula 1”. They considered that “F1” was thus descriptive, and so the public would not consider it to be the dominant element of the overall impression conveyed by the application mark.
The Court found some degree of visual similarity between the application mark and the “F1” word marks because of the “F1” element which was common to all of them. However, the court also found that the application mark and the “F1” word marks differed by virtue of the presence of the word “LIVE” and a figurative element in the application mark. Phonetically, the addition of the word “LIVE” in the application mark was said to counterbalance the common element “F1”, but there was still some degree of phonetic similarity between the marks.
The Court said that the addition of the word “LIVE” in the application mark made it “conceptually richer than the earlier marks” because it suggested the reporting or broadcasting of Formula 1 races in “real time”. The degree of conceptual similarity between the marks was therefore found by the court to be weak.
It was considered by the Court that consumers only connect the Formula One group with the “F1 logo” mark and not with “F1” or “Formula 1” on its own, and as such consumers would not connect the “F1” element in the application mark with the Formula One group. Further, as “F1” was perceived as an abbreviation of “Formula 1” and descriptive of a category of motor racing, there could be no likelihood of confusion.
As for the “F1 logo” mark, the court considered that there was a lack of visual similarity and only weak phonetic and conceptual similarity between it and the mark applied for. Accordingly, there was no finding of likelihood of confusion. A significant factor in this decision was the finding of the court that the public attributed a generic meaning to the “F1” sign. This was said to result in the public understanding that the mark applied for referred to Formula 1 racing, but that the public would not make a connection between that mark and the activities of Formula One.
The finding of the General Court was that Formula One had only shown use and, possibly, reputation, in respect of its “F1 logo” mark, and that the presence of the elements “F” and “1” in the application mark was insufficient to support the inference that there was a link between the marks. Consequently, notwithstanding a certain phonetic and conceptual resemblance, the two signs were not regarded by the court as similar. The court considered that there was no need to examine the earlier mark’s reputation or whether there was a risk that use without due cause would take advantage of or be detrimental to the distinctive character or reputation of the earlier marks.
This undoubtedly is not the final instalment in this story, and one imagines that this decision will be appealed. It is hard to see how the finding of the court that the public see “‘F’ and the numeral ‘1’ as the generic designation of a category of racing car and, by extension, of races involving such cars” (emphasis added), and thus the finding of lack of distinctive character of this element, sits easily with the fact that the only category of racing cars and races involving such cars are those connected with the Formula One group, and thus there would appear to be no such generic category.
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