This decision demonstrates that the “special protection” afforded to famous people when filing a trade mark in their own name, which can neutralise any similarity with other signs which ordinarily may lead to a likelihood of confusion, is a high threshold to meet. In order to establish that an individual is sufficiently famous to rely on the special protection, the fame of the individual must be established to exist throughout the territory applied for.
Background
44 IP Limited, an IP holding company for the English Formula One driver, Sir Lewis Hamilton MBE, filed an EU trade mark application for LEWIS HAMILTON for a range of goods and services in Classes 3, 9, 14, 16, 18, 24, 25, 26, 28, 35 and 41. The application was opposed by Hamilton International AG, a Swiss watch manufacturer, now part of the Swatch group, for goods in Class 14, including wristwatches and clocks, and for related services to those goods in Class 35 (the “Contested Goods”). The opposition was based on the ground that the application would give rise to a likelihood of confusion between the application and Hamilton International’s earlier EU trade mark registration for HAMILTON in Class 14.
Opposition Division’s decision
The Opposition Division upheld the opposition in its entirety, rejecting the EU trade mark application for the Contested Goods on the basis that the goods were identical and similar to the Class 14 goods of the earlier mark. In assessing the similarity of the marks, it was held that not all relevant consumers would recognise Lewis Hamilton as a famous person since car racing was not considered to be an extremely popular sport, in contrast to football. Further, that “HAMILTON” (a shared element in both signs) would be considered an unusual and uncommon surname for at least part of the relevant public, resulting in a higher risk of confusion.
Board of Appeal
The applicant appealed the decision, largely on the ground that Lewis Hamilton is a popular and famous Formula 1 driver who would have been well known to the general public of the EU at the time of filing the application and that consequently no likelihood of confusion arises.
The Board confirmed that famous people do enjoy “special protection” when applying for trade marks for their name, once their name is recognised as famous by the relevant public in the territory applied for (in this case, the entire EU), and that in opposition proceedings, this recognition can neutralise any similarity with other signs which would otherwise lead to a likelihood of confusion.
In examining the evidence, the Board acknowledged that Lewis Hamilton was, at the date of filing of the contested EU trade mark, certainly a famous and well-known person in the United Kingdom. He had won seven World Drivers’ Championship titles, and held the record for the most wins, pole positions and podium finishes in Formula 1 racing. The evidence provided, in the form of numerous publications in papers and magazines citing Lewis Hamilton, books about the driver, and statistical data on followers of social media accounts for Lewis Hamilton, were examined by the Board.
Despite the quantity of evidence provided, the Board concluded that the evidence failed to demonstrate that Lewis Hamilton was famous throughout the EU at the date of the application. Furthermore, the absence of data for people from Bulgaria, Estonia, Croatia, Latvia and Lithuania was held to be particularly decisive, as these five countries together would represent nearly 1/5 of EU Member States, which it considered was a non-negligible proportion.
The Board commented that the easiest way to have proven that Lewis Hamilton was a famous enough person would have been to carry out a survey covering all the Member States of the EU at the time of filing the application. No such survey was provided. As a result of the failure to establish that Lewis Hamilton would be recognised as well-known and famous throughout the EU, the likelihood of confusion between the marks was examined according to ordinary principles and the refusal of the application for the Contested Goods was upheld.
For more information or if you have any questions, please contact Alison Brennan or Emily Roberts or your usual IP team contact.
Subscribe to our Concept newsletter and receive the latest intellectual property legal updates, news and event invitations direct to your inbox.