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IP Cases & Commentary – Details

24 May 2012

Formula One wins Court of Justice appeal against General Court: Formula One Licensing BV v OHIM Case C-196/11 P

Richard Burton

Formula One wins Court of Justice appeal against General Court: Formula One Licensing BV v OHIM Case C-196/11 P

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" as follows:

F1 Live: Formula One Racing-Live F1-Live

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 the following Community trade mark, covering the same goods and services as those indicated in the Racing-Live application:

Formula One Licensing BV F1 Community Trade Mark (CTM) application

OHIM dismissed the opposition in October 2008. The Office 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.

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

Formula One Licensing then appealed to the Court of Justice to set aside the judgment of the General Court. The Court noted that Community trade marks do not replace national trade marks of Member States and that those two types of trade mark co-exist in the economic life of the EU. The Court stated that in this dual system, the registration of national trade marks is solely a matter for the Member States and that, therefore, OHIM and the General Court were not responsible for either the registration or the declaration of invalidity of those trade marks.

Accordingly, the Court found that the validity of a national trade mark may not be called into question in proceedings opposing the registration of a Community trade mark, but only in cancellation proceedings brought in the Member State in which the national trade mark was registered.

In addition, according to the Court, it cannot be found, in such opposition proceedings, that a sign identical to a national trade mark is devoid of distinctive character, namely the ability to allow the public to associate with the goods and services designated. The Court said that such a finding would be likely to eliminate the protection which national trade marks are supposed to provide. 

Hence, the Court noted that OHIM (and consequently the General Court) 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. The Court pointed out that “it is necessary to acknowledge a certain degree of distinctiveness of a national mark on which an opposition against the registration of a Community trade mark is based”. It said that the General Court had not done so.

In the circumstances, the Court held that, in finding that the sign ‘F1’ was identical to the earlier national trade marks of Formula One Licensing and was also devoid of distinctive character, the General Court 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 Court set aside the judgment of the General Court and, since it was not in a position to give final judgment in the matter, referred the case back to the General Court. 

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