December 12, 2021, Abu Dhabi: after a hotly contested Grand Prix, such as Formula 1 had not seen in many a year, Max Verstappen was crowned world championship driver, ahead of Lewis Hamilton – holder of the title and seven-times champion.

December 22, 2021, Alicante: further to opposition proceedings initiated a little over six years earlier, Lewis Hamilton suffered a new defeat off the track, in a race against the earlier trademark HAMILTON –  a watchmaking company founded in the 19^th century and now belonging to the Swatch group[1].

Lewis Hamilton, the famous British Formula 1 driver, already holds several European trademarks based on his name[2]. The EUIPO nevertheless refused to grant him registration of the trademark LEWIS HAMILTON in class 14 (including mainly time pieces and jewelry) and in class 35 for sales services relating to goods of that class, due to opposition by the holder of the earlier trademark HAMILTON.

These proceedings began on December 1, 2015 with the partial notice of opposition filed by the company Hamilton International AG against the whole of class 14 for application No. 014365837 and for part of class 35, for related services. (The trademark application initially designated a greater number of classes and would be the subject of a divisional application in 2018.)

In addition to the revocation proceedings that Lewis Hamilton would initiate in parallel  against the earlier HAMILTON trademark (for possible cancellation of the trademark asserted against him), and which the EUIPO would reject[3], the driver’s defense was primarily directed to differences between the signs — on account of the addition of his forename, LEWIS and especially on account of his reputation as a Formula 1 driver, which supposedly enabled the sign applied for to be conceptually different from the HAMILTON trademark.

Brief reminder: in the context of an opposition, to determine the existence of a likelihood of confusion between two signs, possible visual, oral / phonetic and conceptual similarities or differences are analyzed in turn. In concrete terms, the examiner considers the following questions:

• Do the signs, placed side by side, resemble each other or not? (for example do they in particular include the same number of words/letters, or logos that are close to each other, in the eye of the relevant public?)
• Is it possible to pronounce the signs under comparison in a similar or different way?
• Do the signs under comparison evoke the same idea in the mind of the consumer?

Although other factors may indeed be taken into account for an ultimate finding of a likelihood or not of confusion, these three criteria constitute the immutable basis for comparison between two signs in opposition proceedings, and, when they are weighed up, they sometimes cancel each other. Thus, according to established case law, a conceptual dissimilarity is of such a nature as to outweigh possible visual and phonetic similarities of the signs under comparison – this sometimes being referred to as the “counteraction principle”[4]. By way of example, one of the first occurrences in which this principle was applied is rather revealing: the holder of the earlier trademark PICASSO had been unable to bock registration of trademark PICARO, since “From the conceptual point of view, the word sign PICASSO is particularly well known to the relevant public as being the name of the famous painter Pablo Picasso.” The word sign PICARO may be understood by Spanish-speaking persons as referring, inter alia, to a character in Spanish literature”[5]. It was this strong conceptual difference that was able to counteract the visual and oral similarities between the two trademarks.

Conceptual dissimilarity may thus be found if each of the marks under comparison calls up a clear idea or concept, of such a nature as to be directly perceived / understood by the public, that is different from that of the other sign. If that is the case, such dissimilarity may by itself suffice to counteract the visual and phonetic similarities and eliminate the likelihood of confusion.

It was thus this principle which the driver Lewis Hamilton attempted to assert in the opposition proceedings against the HAMILTON trademark, arguing that his considerable reputation as a Formula 1 driver gave his LEWIS HAMILTON verbal trademark distinctiveness which was immediately apparent, outweighing the similarities with the earlier HAMILTON trademark. Although the evidence filed appears to have been considerable (the examiner noted that the applicant took great trouble to show that LEWIS HAMILTON is the name of the famous Formula 1 driver renowned throughout the European Union[6] – and indeed, providing the opponent with the observations and exhibits filed by Lewis Hamilton had to be made in 14 parts), the EUIPO refused to find for Lewis Hamilton’s arguments, on the grounds that:

• although it may have been established that the driver was renowned in the auto racing field, it cannot however be concluded from this that such renown extended to the relevant public: this case concerned class 14 (mainly jewelry and time pieces), and it was to be emphasized that, contrary to football, Formula 1 was not a sufficiently popular sport to infer thereby that it would be obvious for the relevant public that the LEWIS HAMILTON sign makes reference to the racing driver (this expressly echoing the analogy made by Lewis Hamilton in relation to the “Messi” case law which we refer to below);
• although it may be legitimate to file one’s own name as a trademark, that circumstance alone does not give rise to rights and cannot be considered as such to assess the existence (or, as here, the absence) of a likelihood of confusion in the context of opposition proceedings;
• therefore, the HAMILTON element in common would be perceived within each of the signs concerned as a reference to a rather uncommon Anglo-Saxon family name, and the addition of the forename LEWIS is not of such a nature as to exclude that conceptual similarity.

Lewis Hamilton relied on the Messi case law, making an analogy between the opposition proceedings concerning him and the decision handed down by the Court of Justice of the EU in September 2020 in other opposition proceedings between the football player Lionel Messi, applicant for the semi-figurative trademark shown below, and the holder of the earlier verbal trademark MASSI[7]:

The application by Lionel Messi specified in particular clothing in class 25 and sports goods in class 28. The Court held that:

“when assessing the overall risk of confusion, under Article 8, paragraph 1 b) of regulation No. 207/2009, and in particular regarding the possibility that the conceptual differences between the signs at issue counteract the visual and phonetic similarities between these signs, the Court reiterated the consideration, at point 75 of the appealed decision, that the reputation of the football player Messi was such that it was not plausible that, in the absence of concrete indications to the contrary, the average consumer, faced with the MESSI sign designating clothing, gymnastics or sports articles as well as protective apparatus and instruments, would not take into account the meaning of that sign as constituting a reference to the name of the famous football player and primarily perceive it as one trademark, among others, for such goods.”[8]

The decision handed down in the HAMILTON v LEWIS HAMILTON opposition did not contradict that “Messi” decision, since the examiner accepted the analogy and responded to it point by point, thereby reaching the conclusion that the circumstances of the case differed and that the conditions for application of the counteraction principle were not met:

• the examiner noted that the reputation of Lewis Hamilton, established in the motor sports field, did not extend or at least had not been shown for the goods in suit of class 14 —whereas that of Lionel Messi, in his capacity as a footballer, could be established / inferred for articles of clothing in class 25 and sports articles in class 28,
• from the point of view of the relevant public, the LEWIS HAMILTON sign did not therefore have a clear and specific meaning that significantly differed from the prior sign HAMILTON — the two signs, for their conceptual comparison, on that basis being reduced to the Anglo-Saxon family name held not to be widespread, such that it lacked the weight it should have had in the balance between the visual, oral and conceptual similarities.

Indeed, whatever the reputation of the sportsperson or more generally of the later applicant / sign concerned, that reputation:

• by itself makes no difference in assessing the likelihood of confusion as such,
• unless it is taken into account solely under the counteraction principle, i.e. in counterbalancing possible visual and oral similarities, if such reputation is shown from the point of view of the relevant public and thereby confers a clear and specific meaning to the sign concerned which differs from that of the sign with which the comparison is made.

In another recent case, application of these principles was at the expense of AC Milan football club, when the General Court of the European Union rejected its appeal against the decision that held there was a likelihood of confusion between its semi-figurative filing given below and the earlier German verbal trademark MILAN[9]:

In its appeal against the successive decisions of the EUIPO, the AC Milan football club contended – in addition to the argument on the predominance of its logo in the visual comparison, which was not held sufficient – that the reputation of its name in Germany, which was of course linked to the football club playing under that name, had not been considered by the examiners. However, the Court pointed out that, in accordance with established case law:

“with regard to the applicant’s argument based on the reputation of the mark applied for in Germany, it should be noted, as EUIPO rightly pointed out, that only the reputation of the earlier mark, and not that of the mark applied for, must be taken into account in order to assess whether the similarity of the goods designated by the two marks is sufficient to give rise to a likelihood of confusion”.

For the reasons already detailed above, this decision – contrary to what certain comments may have suggested – is no more in contradiction with the decision handed down in the “Messi” case, than our opposition decision concerning Lewis Hamilton. On the contrary, this is all the more clear in that in the decision involving AC Milan, the reputation of the football club appears to have been asserted on a general basis, to bear the overall assessment of the likelihood of confusion, whereas if it had been required to influence the outcome of the examination of the likelihood of confusion or the absence thereof, it would have had to be asserted / shown / taken into account at the stage of conceptual comparison, so as to benefit from the counteraction principle. This does not seem to have been the case – and as the opposition was positioned on the terrain of class 16, it is furthermore not certain that the reputation of the club would have been recognized from the point of view of the relevant public.

However, to return to our dear Lewis Hamilton and to conclude: the opposition decision handed down last December is still open to appeal, and although an appeal does not yet appear to have been made at the time of writing this newsletter, it cannot be ruled out that the driver will still refuse to cross the finishing line – especially considering the importance that protection in class 14 could hold for him in signing agreements for partnerships/sponsorship and alliances.

 

Nelly Olas is an Intellectual Property Attorney. Before joining the firm Santarelli in 2015, she worked as counsel – admitted to the bars of Paris and New York. She has more than 15 years of experience, and is the holder of a D.E.A. in literary, artistic and industrial property from Paris 2 – Assas University, as well as an LL.M. in Intellectual property from the University of Cardozo in New York.

N.B. In formula 1, a “bonus point” is an additional point awarded in a Grand Prix to the driver making the fastest lap. It is added to the points scored at each Grand Prix and on the basis of which the rankings for the award of world champion are established

[1] Opposition decision of December 22, 2021, HAMILTON v. LEWIS HAMILTON, proceedings No. B 2 617 200

[2] The driver’s trademarks are in reality held through his company, 44IP Limited. We will however use the name Lewis Hamilton in the interest of simplicity.

[3] Decision of the 4^th Board of Appeal of October 20, 2020, case R 351/2020-4

[4] In a decision of October 14, 2003, Court of First Instance of the European Community (as it was still called at the time) came to consider that “ the conceptual differences which distinguish the marks at issue are such as to counteract to a large extent the visual and aural similarities” and that “the fact that one of the marks at issue has such a meaning is sufficient – where the other mark does not have such a meaning or only a totally different meaning – to counteract to a large extent the visual and aural similarities between the two marks” (EC CFI, October 14, 2003, case T-292/01).  

[5] CFI, June 22, 2004, case T-185/02, upheld by the CJEU, January 12, 2006, case C-361/04, paragraph 55

[6] Specifically, the examiner noted that: “The applicant goes to great lengths to prove that LEWIS HAMILTON is the name of a very famous Formula 1 driver who is well-known across the European Union and submits a large number of documents in order to support this claim”.

[7] CJEU, 17 September 2020, joined cases C‑449/18 P and C‑474/18 P

[8] Op. cit, para. 36

[9] EGC, November 10, 2021, case T‑353/20