Formula 1: New trademark challenged by 3M!

By Prof Dr Ian Blackshaw

The new Formula One (F1) trademark, which was unveiled at the Abu Dhabi Grand Prix in November last year, has been legally challenged by 3M, the stationery group, well-known for, amongst other things, their Post-it Notes.

The new F1 mark was introduced by its new owners, the American Investment Group, Liberty Media (Liberty), which acquired F1 for £6 billion in January 2017, to stamp its mark on the sport and distance itself from the former regime led by Bernie Eccleston.

The previous F1 mark had been in use for twenty-three years, which, incidentally, Lewis Hamilton and many fans prefer to the new one.

Liberty introduced a new line of clothing featuring their new mark earlier this year.

On 22 May 2018, 3M opposed the application by Liberty to register the new mark as a Community Trademark at the European Union Intellectual Property Office (EUIPO), which is based in Alicante, Spain, claiming that it is confusingly similar to the 3M Futuro Mark, for a range of therapeutic clothing, including compression tights designed to protect air-line passengers from deep-vein thrombosis, which 3M registered at the EUIPO, as a Pan-European trademark, in June last year.

Liberty only applied for the registration of their new mark at the EUIPO in November 2017, so this gives 3M priority over the Liberty mark. The general principle being ‘first in time is first in right’.

The EUIPO, in a letter sent to Liberty, has stated that it has found the opposition “admissible at least in so far as it is based on the …. earlier right.”

The adversarial stage of the opposition proceedings will begin on 27 August 2018 and Liberty is required by the EUIPO to submit its observations in reply by 26 December 2018.

Although the F1 application covers clothing, it excludes therapeutic clothing, in respect of which the 3M mark is registered, and this is not expected necessarily to let F1 off the hook, because of the confusingly similarity of the F1 and 3M marks, and also because of the fact that some of the products, on which the two marks are used, are the same.

The similarity between the two marks may be seen and compared by logging onto ‘www.kniff.com/markmatters/new-formula-1-logo-launched-too-fast/’.

Of course, it is possible for the matter to be settled amicably by a so-called Trademark Co-Existence Agreement, under which F1 would be allowed to use its new mark on non-therapeutic clothing, but the price exacted for this by 3M is expected to be high and perhaps might prove to be prohibitive. Especially, as the pre-tax profits of 3M are 18 times higher than those of F1!

It will be interesting to see how the matter is finally resolved and what effect it may have on the sport of Formula One!

Prof Dr Ian Blackshaw may be contacted by e-mail at ‘ian.blackshaw@orange.fr’