Lewis Hamilton company loses TM battle against Swatch
The company holding IP rights relating to racing driver Lewis Hamilton has failed in its attempt to obtain a declaration of invalidity of a trademark filed by watchmaker Hamilton.
The European Union Intellectual Property Office (EUIPO) last week rejected 44IP's application for a declaration of invalidity against all the goods covered by the trademark ‘Hamilton’.
Watchmaker Hamilton, which is part of the Swatch Group, had applied for the trademark in 2014, covering goods in classes 9 and 14, including watches, jewellery and DVDs. The trademark was registered in 2015.
In 2017, 44IP opposed the mark, citing absolute grounds for invalidity, bad faith and public policy concerns.
“It basically argued that the EU trademark proprietor is also the proprietor of the EU trademark number 103,200 registered on June 5, 1998, for the word mark ‘Hamilton’ registered for goods in class 14, which, according to the cancellation applicant, covers a larger scope in comparison to the goods in Class 14 of the contested mark,” said the EUIPO.
44IP claimed that the registration of the contested mark constituted an attempt “‘to extend the grace period for non-use’ of the earlier registration for the goods covered by the contested mark and therefore, it had been filed in bad faith and it impedes fair competition”.
Late last year, the EUIPO’s Cancellation Division rejected Lewis Hamilton’s application for a declaration of invalidity in its entirety. Earlier this year, his company filed an appeal against the contested decision.
However, last week, the EUIPO’s Board of Appeal concluded that the appeal was not well-founded.
On 44IP’s argument of bad faith, the board noted that: “Basically, the cancellation applicant explicitly and repeatedly admitted that the earlier registration as well as the contested mark were used by the EU trademark proprietor.”
The board added that Hamilton had also provided ample evidence that its trademark was genuinely used for watches.
In concluding, the board said that both the contested mark and the earlier registration were genuinely used, and 44IP’s argument that the contested mark is a repetitive filing had “no factual basis from the outset”.
Throughout its opposition, 44IP had also argued that the case should be suspended in light of the pending SkyKick ruling (read more about this decision here).
The SkyKick ruling was handed down in January this year.
“It follows that all grounds for appeal regarding the possible suspension of the present case in view of that preliminary ruling are moot. It is not comprehensible why the statement of grounds filed on June 18, 2020, after the judgment was issued, does not address this point. In fact, all the theories on which the cancellation request, and the present appeal, were based have been dismissed by the court,” said the board.
44IP’s other arguments were dismissed and it was ordered to pay €1,000 ($1,182) to Hamilton.
Hamilton had previously brought a trademark opposition against 44IP, over the trademark 'Lewis Hamilton’. Hamilton opposed this application insofar as it covers wrist watches and jewellery, on the basis of a registration for the trademark ‘Hamilton’. “We are defending against this opposition and hope and expect that that the decision will go in our client's favour,” said Ian Bartlett, partner at Beck Greener and representative of 44IP. He added: “After the opposition by Hamilton was received, and even though we thought that its opposition would not succeed, we decided to commence two actions against Hamilton and its trademark registrations for ‘Hamilton’, namely a non-use revocation claim and an invalidation claim. It is the latter of these two which is the subject matter of the recent decision.”
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