Disagreement over brand name
The Hamilton Watch Company from the US, now based in Switzerland (part of the Swatch Group), applied for an EU trademark, but Lewis Hamilton unsuccessfully objected.
Risk of confusion
The current trademark dispute concerns the question of whether watchmaker Hamilton can successfully challenge the trademark registration of Lewis Hamilton, the registrar of wristwatches, among other things. Hamilton invokes the European Trademark Regulation for this purpose.
The EU Intellectual Property Appeals Chamber states that celebrities can claim trademark rights under certain circumstances:
“According to case law, famous persons enjoy special protection when applying for trademarks. To the extent that their names are recognizable, such recognition eliminates any similarity to other marks that would, in normal circumstances, lead to potential confusion.
In short, the idea behind this is that there is no or less risk of confusion if the audience (only) recognizes (name) of the celebrity. Is Lewis Hamilton such a celebrity?
The evidence provided (including newspaper and magazine reports, social media presence and reports on Formula 1) is considered insufficient:
“According to case law, the applicant must in any case prove that Lewis Hamilton was a well-known and well-known person in the entire EU at the date of submission of the application (Tuesday 2015)… The Council is not convinced that at the date of submission of the disputed EUTM application, Lewis Hamilton was , despite his fame as a Formula 1 driver, especially in the United Kingdom, and to some extent also in Germany, Spain, France and Italy, is known and recognized as a famous athlete by the vast majority of the relevant public in Bulgaria, Estonia, Croatia, Latvia and Lithuania. They will recognize his name and consider him a famous and well-known person. “Good reputation. Taken together, these five countries are no longer a significant part of the European Union, as they represent approximately 1/5 of its member states, approximately 8% of its size and approximately 5% of its population.”
Formula 1’s reputation therefore has no direct impact on the perception of Lewis Hamilton by the relevant public in the European Union. The case will be dealt with simply according to the normal rules regarding potential for confusion. It was concluded that there was a possibility of confusion between the two opposing marks because they were similar, registered for almost the same goods and services (at least wristwatches) and targeting the same audience.
It is added to the ruling that the name Lewis Hamilton is often shortened to Hamilton, including in his own name:
“Even if “Lewis Hamilton” has the status of a famous person, the term “Hamilton” alone will also be associated with him, which may lead to the fact that the public may think that the previous trademark has also been endorsed by the applicant,” which also leads to “to potentially cause confusion since the public may believe that both trademarks come from the same enterprise or belong to economically related enterprises.”
Previous disputes regarding trade names
This case can be compared to the trademark dispute between Max Verstappen and Nike. It was said that because of Max Verstappen’s fame, the public would not establish a relationship with the clothing brand Nike. This argument was not accepted at the time.
This is different from trademark disputes involving other celebrities, such as Messi. Then it was assumed that the audience would (rather). Think of the footballer Messi, not the Messi trademarks he allegedly infringes.
Jost Becker, Trademark Law Attorney
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