Lewis Hamilton, a seven-time Formula 1 World Champion and holder of the F1 record for career race victories, stands as one of the most accomplished racing drivers in history. However, his attempt to register his name as an EU trade mark faced challenges at the EU Intellectual Property Office (“EUIPO”), which asserted that Hamilton lacked the necessary fame to neutralise any similarity with an earlier trade mark. The EUIPO’s Board of Appeal (“BoA”) recently affirmed that his application for ‘LEWIS HAMILTON’ conflicted with the earlier trade mark registration for ‘HAMILTON’ held by a renowned watchmaker.
Hamilton International AG, founded in Pennsylvania, USA, in 1892, and part of the Swiss Swatch group since 2007, claims to have established its brand decades before Lewis Hamilton’s birth in 1985, attaining the status of ‘The Watch of Railroad Accuracy’ during the early days of American railroads. The company boasts a history of providing watches to iconic figures such as Elvis Presley, Marlene Dietrich, and Will Smith, as featured in films like ‘Shanghai Express’ (1932), ‘Blue Hawaii’ (1961), and ‘Men in Black’ (1997), respectively.
On 14 July 2015, 44IP Limited, managing the intellectual property rights of Sir Lewis Carl Davidson Hamilton MBE, filed an EU trade mark application for ‘LEWIS HAMILTON’ across various classes, including class 14 (jewellery, clocks, wristwatches, works of art in precious metals) and class 35 (retail and wholesale services for these goods). Hamilton International AG opposed this application, citing its existing ‘HAMILTON’ trade mark registered in 2015 for goods in classes 9 and 14, including various horological instruments. Hamilton International AG asserted that its trade mark had an enhanced distinctive character and reputation in the EU concerning watches. In contrast, 44IP contended that the widespread recognition of Lewis Hamilton as a Formula 1 driver would prevent and counteract any likelihood of confusion.
In December 2021, the Opposition Division upheld the opposition on the basis that the parties’ signs were similar, the parties’ goods and services were identical and/or similar and consequently there was a likelihood of confusion between the trade marks. Upon appeal, the BoA recently upheld the Opposition Division’s findings concluding that the evidence provided by the applicant did not establish that, at the time of filing the contested sign on 14 July 2015, Lewis Hamilton was universally recognised as a famous sportsman by the relevant public across the entire EU. Consequently, the special protection (developed from case law) that is usually afforded to famous individuals applying for trade marks, where recognition of the name can neutralise any similarity with earlier signs, did not apply in this case, as the special protection is contingent on the universal recognition of their name across the EU.
The BoA determined that the relevant goods were not exclusively targeted at the EU public interested in motorsports but also at the general public. In addition, whilst Lewis Hamilton may be famous in the UK, evidence submitted regarding the UK was deemed irrelevant post-Brexit. The BoA acknowledged that Grand Prix races attract millions of viewers globally but emphasised that not all drivers, including a specific one like Lewis Hamilton, are universally recognised by the public.
According to the BoA, the most straightforward method to establish Lewis Hamilton’s fame, would have been a survey covering all EU Member States conducted before the application date. However, 44IP opted to submit extensive evidence, consisting of almost 6,000 pages. Whilst it was acknowledged that Lewis Hamilton is a famous Formula 1 driver, in particular in the UK, and to some extent also in Germany, Spain, France and Italy, based on the evidence filed, the BoA was not convinced that he was likely to be known and recognised as a famous sportsman by the relevant public in Bulgaria, Croatia, Estonia, Latvia, and Lithuania (which together are not a negligible part of the EU and which have minimal connection with Formula 1) to counteract any likelihood of confusion.
The Board added that even if Lewis Hamilton was famous throughout the EU, there would still be a likelihood of confusion. Based on the evidence filed including newspapers referring to him only as ‘Hamilton’, even if Lewis Hamilton enjoyed the status of a famous person across the EU by the term ‘Hamilton’ alone, there would still be a likelihood of confusion because the public might believe that the earlier trade mark by Hamilton International AG is endorsed by him with both trade marks coming from the same undertaking or economically-connected undertakings.
It is apparent from this case that individuals of fame, much like the general public, do not possess an unrestricted right to protect and use their name as a trade mark. This case highlights the difficulty and is a reminder that fame must be proved throughout the EU and that you cannot extrapolate the perception of the public in one member state to another.
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