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IP Cases & Commentary – Details

1 July 2012

OHIM Left in the Pits! Formula 1 Wins Appeal Against General Court in C-196/11 P Formula 1 Licensing v OHIM

Richard Burton

OHIM Left in the Pits!  Formula 1 Wins Appeal Against General Court in C-196/11 P Formula 1 Licensing v OHIM

In April 2004, Racing-Live SAS (subsequently replaced by Global Sports Media Ltd) filed a Community trade mark application for a figurative trade mark in respect of various goods and services in Classes 16, 38 and 41 including ‘magazines; books; publications; reservation of tickets for shows; arranging competitions on the Internet’. The mark which included the words ‘F1-Live’ is shown in figure 1.

Formula One Licensing BV opposed the application. The opposition was based on an International Registration and two national registrations for the word mark ‘F1’ along with a Community trade mark, covering the same goods and services as those indicated in the Racing-Live application, as shown in figure 2.

OHIM upheld the opposition on the basis of the earlier International Registration for the word mark ‘F1’, finding that there was a likelihood of confusion.

On appeal, the Board of Appeal (BOA) dismissed the opposition in October 2008. The BOA found that there was no likelihood of confusion between the mark applied for and the earlier ‘F1’ marks. Further, OHIM stated that the word element ‘F1’ was descriptive in the trade mark.

Formula One Licensing subsequently brought an action for the annulment of OHIM’s decision before the General Court (GC). In February 2011 the GC dismissed the action and confirmed the BOA’s decision.

Formula One Licensing then appealed to the Court of Justice of the European Union (CJEU) to set aside the judgment of the GC.

The CJEU found that the validity of a national trade mark may not be called into question in CTM opposition proceedings, but only in cancellation proceedings brought in the Member State in which the national trade mark was registered.

The CJEU noted that OHIM (and consequently the GC) must verify the way in which the relevant public perceives the sign which is identical to the national trade mark, solely in relation to the mark applied for, and evaluate, if necessary, the degree of distinctiveness of that sign. However this verification has limits and a finding that a sign identical to a national trade mark is devoid of distinctive character would be likely to eliminate the protection which national trade marks are supposed to provide. Such a finding would not respect the system based on co-existence of CTMs and national trade marks.

In the circumstances, the CJEU held that, in finding that the sign ‘F1’, which was identical to the earlier national trade marks of Formula One Licensing, was descriptive, the GC had called into question the validity of those trade marks in proceedings for the registration of a Community trade mark, therefore infringing the CTM Regulation.

Accordingly, the CJEU set aside the judgment of the GC and, since it was not in a position to give final judgment in the matter, referred the case back to the GC.

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