Trade mark decision

BL Number

O/419/02

Decision date

14 October 2002

Hearing officer

Mr G Salthouse

Mark

CHF1

Classes

03, 04, 09, 14, 16, 18, 25, 28, 32, 35, 38, 41, 42

Applicant

Channel F1 Limited

Opponent

Formula One Licensing BV and Formula One Administration Limited

Opposition

Sections 3(6); 5(2)(b); 5(3) & 5(4)(a)* (*other grounds under Section 3(1) were cited but withdrawn at the hearing).

Result

Section 3(6) - Opposition failed.

Section 5(2)(b) - Opposition failed.

Section 5(3) - Opposition failed.

Section 5(4)(a) - Opposition failed.

Points Of Interest

• 1. Comparison of the marks F1 FORMULA 1 v CHF1

Summary

The opponents were owners and commercial rights holders of various marks, both registered and unregistered, comprising of or including the words FORMULA ONE or the letter and numeral F1.

At the hearing they selected six earlier marks as constituting their strongest case; four comprising the words, letter and numeral F1 Formula 1, in various classes and two comprising the word and numeral FORMULA 1. They produced evidence of licensing agreements and actual license payments in respect of these marks. The Hearing Officer, however, whilst acknowledging that these terms were well-known as descriptive of a category of motor racing, considered that the evidence did not confirm that they had acquired a secondary meaning. In view of this the Hearing Officer concluded that under Section 5(2) the matter came down to a simple comparison of the respective marks. The evidence, for the purposes of Section 5(3) did not establish that the marks were viewed as indicators of origin; neither, for the purposes of Section 5(4), did it establish that the terms were distinctive as opposed to descriptive for motor racing services, (although the F1A logo had established reputation and goodwill in respect of motor racing entertainment and clothing).

Under Section 5(2)(b) the Hearing Officer decided that, by reason of disclaimers in registered marks, or the fact that others were not yet registered, he had only to deal with two of the opponents marks/registrations, these were F1 Formula 1 and FORMULA 1. However, after a detailed consideration of these and a comparison with the mark/specification applied for, the Hearing Officer found no likelihood of confusion and that ground of opposition failed accordingly.

He also found that the opponents would be in no better position were their unregistered marks to proceed to registration.

Under Section 5(3) he found that the evidence did not establish the claims made and hence this ground failed also.

Under Section 5(4)(a) the Hearing Officer found that the opponents had not shown goodwill or reputation in any mark that was likely to be confused with the applicants’ mark. This ground failed accordingly.

Under Section 3(6) the opponents alleged that the applicants had no bona fide intention of using the mark over the full range of the specifications. They were in "a very small way of business" it was said. However, the Hearing Officer considered that the evidence showed an intention on the part of the applicant to expand their business, and the opponents had not discharged the onus which was on them to prove otherwise.