Slipstreaming Trade Mark Slingshots to Pole Position

Brands and the protection of those brands are part of the lifeblood of professional motor sport at any level, but even the biggest players occasionally get burnt.

The image on the left is famous around the globe as the logo of Formula One.  It is also a registered trade mark.

 

As such, the mark owner (Formula One Licensing (FOL) is, on the face of it, entitled to stop others using identical or similar marks in trade for similar or identical goods and services in the relevant territories.  With these powerful rights behind it, when FOL spotted a Community Trade Mark (CTM) application to register the logo shown above right, FOL opposed it.

Evidence before the Court showed the steps taken over the preceding 10 years to develop the reputation in FOL's brand, including the strict rules imposed on the use of that brand.  However, the Court found that, whilst the public recognises the F1 logo as a brand, they use the phrases "F1" or "Formula 1" to describe a certain type of vehicle and races involving those vehicles.  It follows that these phrases are not generally perceived as trade marks by consumers (who use them as generic terms). Therefore FOL has much weaker rights in the phrases "F1" and "Formula 1" when not used in a logo form.

With this in mind, the Court considered whether consumers were likely to be confused into believing the goods supplied under either of the above marks came from the same business.  In reaching a conclusion, the Court considered that the public would view the "F1" element of the later mark as descriptive and the "live" element as suggesting real time reporting of an event.  These factors and the visual and conceptual differences between the 2 marks was enough to ensure the public would not be confused.  Global Sports Media were allowed to register their mark, although it remains to be seen whether an appeal will be filed.

Trade mark registrations are a powerful tool and an essential weapon in any business' armoury when it comes to protecting their brand and associated reputation.  This decision, which will surprise many in the industry, shows how important it is not only to take steps to identify and protect brands through trade mark registration, but also to police and properly manage those brands.

Ashfords has experience in dealing with a wide range of legal issues, including the protection, management and enforcement of your brands. If you would like any more information on how this article affects you or on any wider brand protection issues, please contact Rory Mac Neice on 0117 321 8071.

Ashfords LLP is regulated by the Solicitors Regulation Authority.  The information in this note is intended to be general information about English law only and not comprehensive.  It is not to be relied on as legal advice nor as an alternative to taking professional advice relating to specific circumstances.