18 August 2020TrademarksMuireann Bolger

Formula One collides with UKIPO over F1 trademark

In a blow for  Formula One, the  UK Intellectual Property Office (UKIPO) has prevented the brand from blocking a trademark registration that it claimed would lead to confusion with its own ‘F1’ mark.

In a decision handed down on Friday, August 14, the UKIPO allowed sports brand Bux & Co to retain its trademark ‘F1T’, which the company first applied for in May 2019 to cover goods and services including sportswear, fitness training and gym facilities. The UKIPO accepted the trademark application the following month.

However, Bux & Co restricted the scope of the application in July 2019 to the “provision of gym facilities”. In September 2019,  Formula One filed a notice of opposition, arguing that the disputed trademark was “visually, aurally and conceptually similar” to its own ‘F1’ mark, and that the services offered were similar to the sporting activities provided under ‘F1’.

Bux & Co filed a counterstatement denying the ground of opposition, arguing that the marks were dissimilar and stating that consumers were accustomed to differentiating between marks consisting of two and three letters on the basis of small differences between them.

The company further held that its trademark would be perceived as a stylised version of the word “fit”, but did concede that the services offered under the competing marks were similar.

The UKIPO disagreed with Formula One’s argument the mark evokes or alludes to Formula One motor racing, finding that it had not provided any evidence to show that a significant proportion of consumers would perceive the mark in this way.

It also agreed with Bux & Co that some consumers will perceive the mark as “an inventive misspelling” and found that the average consumer would not be directly confused between the two marks. It held that, even though the contested trademark contained ‘F1’,  the difference between the marks created by the additional letter “T” in the contested mark “would not be overlooked” by the average consumer.

Even though this difference was at the end of the marks, “a position which ordinarily has less impact than the beginning”, this was offset by the shortness of the marks, the UKIPO said.

The UKIPO was also unconvinced by Formula One’s argument that the average consumer would assume a commercial association between the two brands, or sponsorship on the part of the opponent, merely because of the shared characters “F1”.

It stated that “this element is not so strikingly distinctive that consumers would assume that only the opponent would be using it in a trade mark”.

The addition of a letter “T” to the seemingly arbitrary characters “F1” was not “characteristic of any brand extensions” with which consumers would already be familiar, the UKIPO found.

It concluded that, consequently, there was no likelihood of indirect confusion between the two trademarks.

The UKIPO ordered Formula One to pay costs.

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