Idea Marketing SA sought to register “F1H2O” in Singapore
Idea Marketing SA (“Idea Marketing”) had applied to register the trade mark “F1H2O” for their powerboat race brand name on 11 January 2007.
Prior to the application by Idea Marketing, Formula One Licensing B. V. (“Formula One”) had registered the following trade marks:
Formula One Licensing B.V. is a company related to the Formula One Group. The Formula One Group is a group of companies that control various rights and operations of the Formula One World Championships, the premier motorsport racing event.
Formula One Licensing counters that their “F1” mark enjoyed a “well-known” trade mark status
Formula One Licensing B.V claimed that they had used “F1” before 11 January 2007 and that it is a “well-known trade mark”. Formula One also claimed that they enjoyed goodwill in the plain “F1” mark prior to the application by Idea Marketing. This formed the basis of their opposition to Idea Marketing registering their F1H2O trade mark.
“F1” was not a “well-known” trade mark prior to 2007
In order to prove that a trade mark is well known in Singapore, some factors to take into account include:
- the degree to which the trade mark is known to any relevant sector;
- the duration, extent and geographical area of any use or promotion of the trade mark
- any registration of trademark
- any successful enforcement of any right in the trade mark in any country or territory; and
- any value associated with the trade mark.
Even if the relevant sector of the public included the fans who visited the Sepang circuit to catch the motor races, the readers of the “F1 Racing” magazine and consumers of the relevant merchandise, the judge held that there was no evidence that the plain “F1” mark was well known to either group of people.
Therefore the Court held that F1 was not a well-known trade mark.
“F1” ruled not distinctive to Motor Races
However, the Judge held that the plain F1 mark was not distinctively linked to the Formula One motor race before 11 January 2007. In order to show distinctiveness, it must be shown that the plain “F1” mark signifies trade origin and Formula One was unable to show this. Formula One had only managed to show that a section of the public may associate the plain “F1” mark with the motorsport races and this was insufficient to show trade origin.
The High Court consequently dismissed the appeal to prevent the registration of the “F1H2O” trade mark.
When assessing whether a trade mark has acquired goodwill and distinctiveness, only evidence prior to the date of the registration of the trade mark is taken into consideration.