Trade Marks in The Fast Lane The Impact of F1 on Trade Marks

They say that we see what we want to see. A motorsports enthusiast watching Formula One will be transfixed by the power and beauty of the cars and the skill and courage of the teams and their drivers.  By contrast, advertising and branding professionals could be more than a little distracted by the commercial potential of the advertising canvas filled with the liveries of the world's largest brands.  Anyone trying to keep track of the number of brands flashing across their screens, whether on the cars themselves, on trackside hoardings or on the driver's clothing, would be forgiven for soon losing count.

Historically, F1 cars were decorated with their national colours.  Over time, this practice died off and the national colours were replaced with those of each team's sponsors. For decades, F1 cars were emblazoned with advertising for tobacco products, with Marlboro, and John Player amongst the most famous.  Today, you won't see any explicit tobacco advertising (although Marlboro still sponsor the Ferrari team and a distinctive red and white colour scheme can still be found on the Ferrari team cars).  The ban on tobacco advertising saw another sea change and, these days, you are more likely to see teams entering into sponsorship deals (and covering their uniforms and vehicles etc) with logos advertising energy drinks, insurance or printers.

The F1 season has a global television audience in the hundreds of millions each year.  With numbers like that, even a few seconds of screen time can be incredibly valuable.   Commercially this is a two way street; it’s a symbiotic relationship where both parties benefit; advertising revenue is a significant contributor to the income of the sport; the sport gives advertisers access to a global consumer market.  Last year, the top 100 F1 sponsors set up an organisation called F100. This body was designed to enable key sponsors of the sport to air their ideas and concerns and to assist in moulding F1 for the future.  In short, F1, a sport enjoyed by millions, is opening itself up to be influenced not just by the will of the fans, by technological advances or what makes the most exciting race, but also by how best to advertise the trade marks of its sponsors.

It is clear that brands and the protection of those brands are part of the lifeblood of professional motor sport at any level.  But in Formula One, there is one brand which sits above all others: F1 itself.  

The image on the left is famous around the globe as the logo of Formula One.  It is also an image and registered trade mark owned by Formula One Licensing BV ("FOL") (which, according to records at OHIM, has filed approximately 70 Community Trade Mark applications).

 

Readers may have picked up in recent news stories, that when FOL spotted a CTM application to register the F1 Live logo shown above right (originally filed and owned by Racing Live, now owned by Global Sports Media Ltd), they took formal steps to try to stop the registration being granted.  It turned out to be an opposition proceeding which would go all the way to the General Court (Case T-10/09), and it is possible that the story could continue in the future.

Evidence before the Court showed the steps taken by FOL over the preceding 10 years to develop the reputation in FOL's brand, including the strict rules imposed on its licensees on the use of the 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.  The Court also acknowledged that consumers would view the term "F1" as an abbreviation of "Formula One".  Further, the Court was satisfied that, as all the evidence related to FOL's use of the logo mark and not the letters "F1", it was the logo, and not the letters which consumers would recognise as FOL's trade mark.

According to this decision the term "F1" and, indeed "Formula One", when used without the logo as registered above, are not generally perceived as trade marks by consumers (who use them as descriptive terms). Therefore, FOL has much weaker rights in the phrases "F1" and "Formula 1" when not used in a logo form.  Although outside the remit of the present case, the Court strongly hinted that the term "F1" may be "generic".   Put another way, that it is only a descriptive term used to identify a type of racing and, therefore is free for all to use.

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 elements of the challenged application therefore carry limited weight from a distinctiveness point of view. 

The evidence presented in the opposition proceedings showed that FOL had granted licences to the logo version and had set strict guidelines for the use of the same,  but evidence was not presented that they had done the same for the word mark.  If they could have put forward compelling evidence that they treated the word mark "F1" in the same way, i.e. as a valuable asset of the business, whose usage was strictly controlled, then, assuming they could have policed such policies in the real world, then the Court may have reached a different decision.  However, that may be counselling perfection and it is easier said than done to control a really famous mark, which by virtue of its fame and public profile becomes a victim of its own success.

Having addressed descriptiveness, the Court was left to compare the logo elements of the two marks and, perhaps unsurprisingly, found that for the purposes of Articles 8(1)(b) there was no likelihood of confusion and that for the purposes of 8(5), there was no risk of association between the two marks.

The risk of descriptiveness arising through F1's fame and common usage,  has been known for sometime as the above case was not the first warning sign on this topic an issue which owners of famous brands are always sensitive to.

Back in 2001, FOL applied to register "F1" as a registered UK trade mark.  Racing Live tried to stop this so they filed opposition proceedings, claiming that the term was a recognised abbreviation for Formula One which could not, as a result, have a distinctive character when it comes to services in connection with Formula One racing.  (Racing Live was the original applicant of the F1 LIVE CTM detailed above).  Racing Live succeeded and the application was blocked.

The story doesn’t end there. The battle to protect the F1 IP rights continues elsewhere in the world and no doubt will do so in the future from time to time.  It was reported that last summer, Speed Drinks Pte distributed an "F1 Racing Energy Drink" in Singapore.  FOL sued, but it has been reported that FOL withdrew its case when Speed Drinks agreed in an out of Court settlement not to distribute the product in Singapore, (so the technical legal issues in the case were not heard in Court).

It isn’t all bad news for F1 and owners of very famous brands .  As IP practitioners are only too aware, market and consumer recognition changes over time and no two jurisdictions are the same. You cannot guarantee the same result around the globe.  By way of illustration, in 2006, (at the same time as FOL was fighting claims that it's mark had become a descriptive term in the EU), Formula One Administration Ltd (FOA) was reportedly bringing a lawsuit in China against a number of fashion companies (under an agreement which permitted it to enforce FOL's brands).  The fashion companies in question were producing clothing under the brand names "F1", "F.one" and "F1 JEANS".  Here, there was no suggestion that the mark had become descriptive and the fashion companies were held to infringe the registered trade mark rights in China.

The world of Formula One offers a wealth of other interesting cases.

A recent example is the curious spat between Ferrari and Ford.  Ford manufacture the F-150.  Ferrari were about to launch the F150.  Ford's vehicle is a pickup truck, ideal for towing a caravan or hauling heavy loads.  The F150 Ferrari is a Formula One racing car.  Ford alleged trade mark infringement in the U.S. courts and Ferrari quickly rebranded their vehicle to Ferrari 150° Italia.  Although this was a U.S. case, it shows the power of a registered trade mark, giving the rights owner significant bargaining power even when, in the real world, it is hard to imagine that there was any real risk of confusion.  One wonders whether, had this matter gone to trial, Ford would have produced evidence of disgruntled consumers arriving in their show rooms looking for an F1 car?  Interestingly, Ferrari does not appear to have thought there was any risk that the reputation of its luxury brand could be tarnished by a possible connection with a pickup truck.

Whilst the above example is of interest, rather than demonstrating a ground breaking development in the law, Formula One cases have in the past been at the cutting edge of developments in the legal system.  One such area is the traditionally tricky issue of celebrity image rights.  Readers may remember the striking image of Damon Hill's eyes seen through the visor of his racing helmet which became a registered UK trade mark (owned by Damon Hill Grand Prix Ltd) and covering a variety of goods, including clothing and toys. The image can be seen at the UK IPO's website by searching against registered trade mark number 2036489.

This application was filed at a time before celebrities and sporting personalities used trade mark registrations as a matter of course to protect their image and reputation.  The application to register the device mark above mentioned above was filed simultaneously with a number of other marks, including one for Damon Hill's signature and one for the words "DAMON HILL".  This suite of marks provided tremendous protection when Hill was at his sporting peak (he would go on to win the F1 championship a year after filing). They protected the driver’s image and his commercial goodwill by an innovative use of the law.

The significance of Hill's application is still felt today; celebrities and sporting personalities now regularly protect their image through trade mark registration.  Damon Hill was one celebrity sportsman who paved the way for all that followed and, in the years since his filings, the identity of sporting heroes has become more and more valuable (think of Beckham or Rooney, the latter of which recently used his name, in registered trade mark form, in a domain name dispute). 

Eddie Irvine indirectly carried on where Damon Hill left off in the Irvine v. Talksport case which famously increased the ability of celebrities to protect their rights in their image.  Here, Talksport Limited used Irvine's image, without his permission, in promotional materials.  The materials in question showed a photograph of the formula one driver, which had been doctored to show him holding a radio, on which were written the words "Talk Radio".  The net effect of the image was that people would, mistakenly, believe Irvine was endorsing the station.  The Court held that this express misrepresentation constituted passing off.  Again, this was a ground breaking moment, with the Court finally confirming the position on an issue which had been the subject of much debate.

The cutting edge world of Formula One, with its high stakes, international reach and attachment to brands is a perfect microcosm in which to explore the power and limitations of the trade mark rights that readers will deal with everyday.  The law in this field, like the technology of Formula 1 cars, will continue to develop every year. Trade mark cases like Formula 1 races are not just about the drivers they depend on innovative expert team work.