Formula One on collision course with 3M over trademark application

Technology company 3M has opposed a trademark that was applied for by racing organisation Formula One (F1), after 3M claimed the mark was too similar to its previously registered trademark.

F1 applied for a new logo at the European Union Intellectual Property Office (EUIPO) in November 2017 after it was bought by media company Liberty Media for $8 billion.

At the time the new logo was introduced, F1’s commercial chief Sean Bratches said that the new logo was designed to “simplify” the brand.

The new logo is a modernised version of the old one, depicting a stylised ‘F1’ with the words ‘Formula 1’ underneath. The logo covers a total of 20 classes, including class 25, which covers clothing, footwear and headgear.

However, 3M has opposed the application based on the ground of likelihood of confusion with its earlier trademark consisting of an ‘F’ shape, which allegedly looks similar to F1’s applied-for mark.

3M applied for its trademark in February 2017, and the EUIPO registered it in June 2017 under the registration number 016,379,919.

The earlier trademark is registered under class 10, covering supportive clothing including orthopaedic braces and supports, orthopaedic elastic bandages and wraps, and orthopaedic cervical collars.

The EUIPO wrote to 3M informing the company that it will advise 3M on whether the opposition is found admissible. If it is, the EUIPO will notify F1, and 3M will be able to submit its observations within a prescribed time limit.

Jim Dennis, IP partner at UK-based law firm Simkins, told WIPR that although there is a similarity between the marks, it is not clear that the goods covered by the marks are similar.

"3M will, I think, have to put in some convincing evidence that their orthopaedic wear is normally sold in clothing and sports outlets, or side by side with ordinary clothing and sports accessories online which might cause confusion among consumers," he explained.

"If F1 want to get rid of this quickly they could offer to disclaim orthopaedic wear and goods from their application, although it doesn’t seem strictly necessary. If not, they will simply defend on the basis that the goods are dissimilar, and force 3M to prove their case," he said.

Dennis added that the case is likely to "rumble on" for several months or years if there is no settlement.

After it emerged that Liberty Media had agreed to purchase F1, WIPR spoke to lawyers about the role of trademarks in the deal, with one explaining that the “iconic” brand was the reason for the high value of the acquisition.

Source: WIPR website

Editor: dora