Watch and learn

11th Feb 2021

Leanne Gulliver rounds up the lessons from an unsuccessful appeal on behalf of a famous F1 name. R 351/2020-4, 44IP Ltd v Hamilton International AG, EUIPO, 20th October 2020.

Seven-time F1 champion Lewis Hamilton may have had much to celebrate on the track in 2020, but the company holding his IP rights, 44IP Ltd (the Appellant), has had less success before the Board of Appeal (BoA). The BoA upheld the EUIPO Cancellation Division’s decision to dismiss the Appellant’s declaration of invalidity filed against the Swiss luxury watchmaker Hamilton International AG’s (the EUTM Proprietor) EU trade mark No. 13496013 for HAMILTON (the Registration) in classes 9 and 14.

Case history

The EUTM Proprietor obtained an EU trade mark registration for the word mark HAMILTON for goods in classes 9 and 14 (including electronic devices and watches) in May 2015. In July 2015, the Appellant applied to register the word mark LEWIS HAMILTON under EUTM No. 014365837 (the Application) for goods and services in classes 14 and 35 (including watches and the retail services of them). The EUTM Proprietor is also the owner of EUTM No. 103200 for the identical mark HAMILTON for a broader range of class 14 goods (the Earlier Registration), registered in June 1998. 

The EUTM Proprietor opposed the Application in December 2015. The Appellant then counterclaimed by filing a declaration of invalidity against all goods in the Registration on the grounds that the Registration: (i) had been filed in bad faith, offending Article 59(1)(b) EUTMR; and (ii) the contested mark was contrary to public policy and offended Articles 59(1)(a) and 7(1)(f) EUTMR. The Appellant argued that owning both marks was an attempt “to extend the grace period for non-use” of the Earlier Registration for the goods covered by the Registration, which demonstrated that the Registration had been filed in bad faith, and as such, the Registration was made contrary to public policy and “improperly impedes fair competition and the free movement of goods” in the EU.

The Cancellation Division rejected the application for a declaration of invalidity in its entirety, prompting 44IP Ltd to appeal the decision.

BoA dismissal

The BoA dismissed that appeal, confirming the rejection of the declaration of the invalidity in its entirety.

In relation to bad faith, the BoA referred to LINDT GOLDHASE1, a decision which held that to determine whether the applicant is acting in bad faith within the meaning of Article 59(1)(b) EUTMR, all the relevant factors specific to the particular case have to be taken into consideration. In the present case, the BoA recalled that the Appellant explicitly and repeatedly admitted that the Earlier Registration and Registration were used by the EUTM Proprietor. The EUTM Proprietor also provided ample evidence that the mark HAMILTON was genuinely used for watches. Therefore, the allegation that the Registration is a repeat filing of the Earlier Registration filed with the aim of “extending” the grace period within which the mark must be put to genuine use had no factual basis.

The BoA reiterated that an EUTM applicant does not have to give legitimate reasons for the filing of an application or to justify his actions or omissions. Therefore, all of the grounds of appeal and arguments obliging the EUTM Proprietor to show use or an intention to use, or to explain why the specification differs from the Earlier Registration, were set aside. Since there was a commercial logic to the filing of the Registration, there is no dishonest intention on the part of the EUTM Proprietor. Further, it was not for the Appellant to comment on the marketing strategy or business decisions of the EUTM Proprietor (for example, whether or not it produced only traditional wrist watches or regularly updated its product portfolio).

Article 60(2)

The Appellant had argued that the contested mark HAMILTON was the surname of the racing driver Lewis Hamilton, demonstrating the EUTM Proprietor’s dishonest intention. The BoA dismissed this argument for six reasons. First, the Registration consists of one word, “Hamilton”, and not “Lewis Hamilton”. Second, Hamilton is a fairly common surname in English-speaking countries. Third, there is no “natural right” for a person to have his or her name registered as a trade mark when that would infringe third parties’ rights.2 Fourth, a prior right to a personal name is not a right that could be a basis for invalidation proceedings. Fifth, the Appellant accepted that the Registration had been used since 1892, long before the birth of the F1 driver. And finally, the Appellant is the legal entity 44IP Ltd and the reference to the natural person Lewis Hamilton is unsubstantiated; it is unclear how a company could invoke personality rights for an individual person.

The appeal under Article 7(1)(f) EUTMR, which prohibits the registration of trade marks that are contrary to public policy or accepted principles of morality, failed on the grounds that the Registration is neither offensive nor insulting.

Teachable moment

This decision is a stark reminder that being famous does not guarantee being able to successfully register your name as a trade mark, or enforce it against a third party using the same or a similar name, particularly when that third party used the mark beforehand. It is therefore vital that celebrities, sportspersons and the like seek professional commercial and legal advice as to how and when to protect their own name, or other IP. 

Consideration should be given to what they are actually seeking to protect. Is it a trade mark for their name (eg, VICTORIA BECKHAM, EUTM No. 002543320), a trade mark for their autograph (eg, “David Beckham”, EUTM No. 001801968), a song title or lyric (eg, Taylor Swift’s LOVER, EUTM No. 018055608 and “Can you just not step on our gowns”, EUTM No. 018081572), a phrase or number associated with the person (eg, Lewis Hamlilton’s HAMMERTIME, EUTM No. 01436594 and “44”, EUTM No. 014365944), or a gesture (eg, Gareth Bale’s hand-shaped heart, UKTM No. 2657917)?  If the element is figurative, would it be better protected by a registered design or reliance on copyright? 

In addition, should the IP rights be held by a corporate entity? And if so, are adequate licences in place for the relevant partners to exploit the IP, and is it clear who should enforce those rights against third parties?

This case also provides some clarity on the practice of “ever-greening”, confirming that refiling a trade mark with an identical sign and identical goods/services does not automatically amount to bad faith if that sign is actually in use for those goods/services.

1 [2009] C-529/07

2 [2019] R 406/2018-4, ARRIGO CIPRIANI, s63

Key points       

  • This decision highlights that a repeat filing of a sign does not amount to bad faith if the sign is in use for the goods/services
  • This case is a useful reminder that personality rights are often held by corporate entities. It is therefore important that the ownership and authority to use and exploit those rights are clear, to enable enforcement

Leanne Gulliver is a Senior Chartered Trade Mark Attorney at Osborne Clarke LLP
[email protected]

 

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