To most people the term “F1” is synonymous with the highest level of motor sport where the races are fuelled as much by drama as they are by gasoline. With year round races taking place in 19 countries, spreading across 6 continents and watched by hundreds of millions of TV audiences worldwide, the fame of F1 seems to be beyond dispute. Therefore it comes as a bit of a surprise when Formula One Licensing B.V. (the trademark manager for the race organiser Federation Internationale de l’Automobile) lost an opposition action against the application of Idea Marketing SA (the appointed global promoter for the F1 Powerboat World Championship) to register the trademark “F1H2O” in Singapore. More shockingly, the Registrar who chaired the opposition hearing took the view that the F1 mark was not well known in Singapore. However, on closer inspection, the Registrar’s unexpected finding turned out to be less sensational and rather more rational.
Formula One Licensing B.V. (the Opponent) based the opposition on 3 grounds, namely, the application of Idea Marketing’s (the Applicant) mark encroaches on the Opponent’s earlier trademarks (and their alleged well-known mark), the use and application of the Applicant’s mark constitutes passing off, and the Applicant had applied to register its mark in bad faith.
Encroachment on the Opponent’s Earlier Mark
The Applicant’s mark “F1H20” was filed as an international registration via the Madrid Protocol (Singapore was one of the designated countries). The Applicant’s mark has a priority date of 11 January 2007 which proved to be a crucial factor in the decision of the Registrar as we shall see a little later.
The Opponent sought to rely on its plain “F1” word mark and not their stylised mark, because it is visually most similar to the Applicant’s word mark “F1H20”. However, the Opponent’s plain “F1” mark was only filed on 10 May 2007, around 5 months after the priority date of the Applicant’s mark, thus it is not an earlier mark. Accordingly, the Opponent had to rely on the following marks with earlier filing dates (circa 1997):
Click here to view image.
Click here to view image.
Click here to view image.
The above marks were found to be markedly different from the Applicant’s “F1H2O” mark and as such the Applicant’s mark did not encroach on the above earlier trademarks.
The Opponent also tried to rely on the fame of the F1 races to establish that its plain “F1” word mark is well-known, therefore it would fit the definition of “earlier trademark”. The Singapore leg of the F1 competitions was announced in May 2007. Immediately following the announcement of the race there was a huge publicity campaign leading up to the first night race in F1 history, the F1 Singapore Grand Prix. However, the Opponent could not rely on all these evidences in the present Opposition as the priority date of the Applicant’s mark came to the rescue once again. The Opponent could only rely on the little evidence that they had which predated 11 January 2007. Consequently, the Opponent’s mark was found to not be well-known in Singapore at the relevant date.
Similarly, the priority date of the Applicant’s mark was a stumbling block to the Opponent’s claim of passing off. The first element of passing off is for the Opponent to establish that it has goodwill in Singapore. The relevant date on which the Opponent’s goodwill should be considered is the date the passing off was said to have commenced, and in this case, the relevant date would be the date where the Applicant’s mark was deemed to be filed, which incidentally is 11 January 2007. As the Opponent’s mark was rarely used in Singapore before the relevant date, the Opponent could not produce any substantial evidence to establish that it had goodwill locally. Having failed to establish the first element of passing off, the Registrar did not go on to consider the other elements of passing off, namely misrepresentation and damage.
The Opponent’s claim of bad faith also failed. The Registrar was of the opinion that the Applicant had the right to register its mark on 11 January 2007 as there were several pieces of evidence from the Applicant as well as the Opponent which showed that the term “F1” was used by the public in both the contexts of motorcar racing as well as powerboating – this shows that the term “F1” is a descriptive and ordinary term which refers to the “top class of professional motor racing”. Further, the Applicant had also been using the “F1” term on the names of its Powerboat Championship in Singapore since 1990 and there was no evidence to suggest that the Applicant knew about the exclusive rights that Opponent claims to have over the term “F1”. Consequently, the Registrar found that the Applicant, in registering its mark, had not acted in bad faith.
There are two things we can learn from this case. Firstly, do not wait to register your trademark; if the Applicant had waited a year longer to file its trademark, then the outcome of the Opposition may well be very different. Secondly, do not allow your trademark to be used as a verb or a description of a product/service because your trademark may lose its protection.