Formula One to Advance EU Trademark Dispute

     (CN) – The EU’s high court revived Formula One’s trademark claims against a company that put the “F1” abbreviation on its website.
     Formula One Licensing, which is a division of Formula One Racing Group, challenged a banner that Racing-Live SAS put on its website. Racing-Live runs an auto-racing website in France and placed the words “F-1 Live” on its homepage.
     But the European trademark office found that the French company did not infringe Formula One’s mark, saying that obvious differences between the two prevented any likelihood of confusion in the market.
     The EU General Court agreed in February 2011, but the Court of Justice reversed Thursday.
     In a system that allows both national and EU trademarks to coexist, the General Court and the trademark office cannot choose a new EU mark over an existing national mark, the justices found. They said such a finding would lead to the elimination of the national mark.
     “It is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of a community trade mark is based,” the decision states. “However, the General Court has not done so in this case.”
     By finding that Formula One Racing’s “F1” national mark had no distinctive character, the General Court called into question the validity of that mark, which predates Racing-Live proposed trademark and infringes EU trademark law, the court found.
     “In those circumstances, Formula One Licensing is justified in claiming that the judgment under appeal is vitiated by an error in law,” the Luxembourg-based court wrote.
     Noting that it is not in a position to render final judgment in the matter, however, the high court referred the case back to the lower court for further proceedings consistent with its opinion.

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