GENERAL COURT, JUDGMENT OF 17 FEBRUARY 2011, T-10/09, F1, F1 FORMULA 1 V. F1-LIVE

The General Court held that "F1" was a generic designation of a category of racing cars and, by extension, of races involving such cars and, therefore, not distinctive, so that the "F1"element could not be taken into account in the assessment of likelihood of confusion.

Racing-Live SAS applied for the registration of the figurative Community trademark for goods and services in classes 16, 38, and 41. Formula One Licensing BV opposed the application on the basis of its German and UK word mark "F1," its international registration "F1" designated to Denmark, Germany, Spain, France, Italy, and Hungary, and the figurative Community trademark "F1 Formula 1."

The Office of Harmonization for the Internal Market's (OHIM's) Opposition Division granted the opposition due to identity or, at least, similarity of the goods and services and a medium degree of similarity between the signs. OHIM's Board of Appeal annulled the decision and rejected the opposition, holding that there was neither a likelihood of confusion in the sense of Article 8(1)(b) CTMR nor a link between the marks according to Article 8(5) CTMR.

Formula One Licensing brought an action before the General Court.

Assessing the likelihood of confusion, the General Court held that the combination of the letter "F" and the numeral "1" was the abbreviation of "Formula 1," and that both, "F1" and "Formula 1," were generic expressions. Therefore, although "F1" was registered as a national trademark in numerous countries, any likelihood of confusion was excluded. Furthermore, because "F1" was generic and Formula One Licensing has only promoted its figurative mark for the last 10 years, the only sign consumers associated with Formula One Licensing was the F1 Formula 1 logotype and not the sign "F1" in standard typeset. Therefore, there was also no likelihood of confusion between the figurative trademarks.

The General Court also rejected an infringement of Article 8(5) CTMR, holding that the only sign for which Formula One Licensing had shown use and reputation was the "F1 Formula 1" logotype. Examining whether the figurative marks were identical or similar, the court did not take into account the letter "F" and the numeral "1" due to their lack of distinctive character. As no element in Racing-Live's mark reminded the public of the F1 Formula 1 logotype, the signs were not similar and therefore, one of the conditions of Article 8(5) CTMR was not fulfilled.

As a result, the General Court dismissed Formula One Licensing's action and upheld OHIM's Board of Appeal decision.