Case T-10/09

Formula One Licensing BV

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

(Community trade mark – Opposition proceedings – Application for the Community figurative mark F1-LIVE – Earlier Community figurative marks, and national and international word marks, F1 and F1 Formula 1 – Opposition rejected by the Board of Appeal – Relative grounds for refusal – Article 8(1)(b) and (5) of Regulation (EC) No 40/94 (now Article 8(1)(b) and (5) of Regulation (EC) No 207/2009))

Summary of the Judgment

Community trade mark – Definition and acquisition of the Community trade mark – Relative grounds for refusal – Opposition by the proprietor of an earlier identical or similar mark registered for identical or similar goods or services – Likelihood of confusion with the earlier mark

(Council Regulation No 40/94, Art. 8(1)(b))

There is, for the average consumer in the European Union, no likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 40/94 on the Community trade mark, between, on the one hand, the figurative sign F1-LIVE, registration of which as a Community trade mark was sought for ‘Magazines, pamphlets, books; all the aforesaid goods relating to the field of formula 1’, ‘Communication and dissemination of books, magazines and newspapers via computer terminals; all the aforesaid services relating to the field of formula 1’ and ‘Electronic publication of books, journals and periodicals; entertainment information; arranging competitions on the Internet; reservation of tickets for shows; on-line gaming; all the aforesaid services relating to the field of formula 1’ in Classes 16, 38 and 41 of the Nice Agreement and, on the other hand, the word marks F1 registered earlier in Germany for services in Class 41, in the United Kingdom for goods and services in Classes 16 and 38 and as an international mark with effect in Denmark, Germany, Spain, France, Italy and Hungary for goods and services in Classes 16, 38 and 41, and the Community figurative mark F1 Formula 1 registered earlier for goods and services in the same classes.

The relevant public will perceive the combination of the letter ‘F’ and the numeral ‘1’ as an abbreviation of ‘Formula One’, which is the commonly used designation of a category of racing car and, by extension, of races involving such cars. Furthermore, the relevant public may perceive the ‘F1’ logo in the figurative Community trade mark F1 Formula 1 as the trade mark that the proprietor of the earlier mark uses in relation to its commercial activities in the field of Formula 1 motor racing. Consequently, the relevant public will not perceive the ‘F1’ element in the mark applied for as a distinctive element, but as an element with a descriptive function. Accordingly, the ‘F1’ element, in ordinary typeset, has only a weak distinctive character in relation to the goods and services covered and the reputation of the Community figurative mark used in the European Union is essentially linked to the logotype itself.

As regards, in particular, the word marks F1, consumers will not connect the ‘F1’ element in the mark applied for with the proprietor of the earlier marks, because the only sign that they have learned to associate with that proprietor is the F1 Formula 1 logotype, and not the sign F1 in standard typeset. They will regard the sign F1 in ordinary typeset as an abbreviation of ‘Formula 1’ – that is to say, as a description.

Given a lack of visual similarity and only limited phonetic and conceptual similarities, the relevant public will not confuse the mark applied for with the figurative mark F1 Formula 1. In that connection, the fact that the public attributes a generic meaning to the sign F1 means that it will understand that the mark applied for concerns Formula 1, but, because of its totally different layout, the public will not make a connection between that mark and the activities of the applicant.

(see paras 27, 38, 49-50, 57, 61)