December 2023 Decision of the First Board of Appeal in Case R 336/2022-1
After trying to register his name as an EU trade mark, the IP company responsible for Lewis Hamilton’s IP has been told by the EUIPO that they have not sufficiently demonstrated his fame across the European Union to be able to rely on the “special protection” normally afforded to famous persons wishing to register their names as EU trade marks. This decision highlights the difficulties associated with registering personal names as trade marks, even when that name is very well-known.
Background
In mid-2015, the IP company responsible for managing Lewis Hamilton’s IP (which Formula 1 fans will be amused to read is aptly named “44IP Limited”) applied to register “LEWIS HAMILTON” as an EU trade mark. Registration was ultimately allowed for various goods and services in Classes 14 and 35, including several relating to jewellery and watches.
The registration was then opposed by a Swiss watchmaker, who argued that the average consumer of jewellery and watches in the EU would likely confuse “LEWIS HAMILTON” with their earlier registered EU trade mark, “HAMILTON”.
44IP Limited argued there was no likelihood of confusion because Lewis Hamilton is a famous Formula 1 driver and thus the average consumer in the EU would readily understand that “LEWIS HAMILTON” refers to him, not the Swiss watchmaker.
The EU Intellectual Property Office’s Opposition Division ultimately decided there was a likelihood of confusion and thus invalidated 44IP Limited’s registration. 44IP Limited have since appealed that decision, and the decision in the appeal proceedings has recently been issued.
“Special Protection”
The EUIPO’s First Board of Appeal acknowledged that famous persons have historically enjoyed a “special protection” when trying to register their names as EU trade marks because the average consumer can be expected to quickly recognise their names, thereby preventing confusion with similar trade marks.
However, the board held that such a “special protection” only applies if the person concerned can demonstrate that they are famous in all “not negligible” parts of the EU.
Proving Fame
To prove Lewis Hamilton’s fame across the EU, 44IP Limited advanced several arguments.
For example, 44IP Limited noted that Lewis Hamilton has won seven Formula 1 World Championship titles and currently holds records in the sport for the most Grand Prix wins, the most pole positions, and the most podium finishes. The board, however, held that this only proved Lewis Hamilton’s fame within motor racing, and not that he was famous at the relevant date in the mind of the average consumer of jewellery and watches.
44IP Limited also presented statistics showing that Formula 1 is followed by lots of people in the EU, however the board noted that no data was put forward regarding people in Bulgaria, Croatia, Estonia, Latvia, or Lithuania. Since at the relevant date these five countries made up about one fifth of the EU’s Member States, accounted for about 8% of the EU’s geographical area and about 5% of the EU’s total population, the board held that these countries collectively make up a “not negligible” part of the EU, and thus that 44IP Limited would need to demonstrate Lewis Hamilton’s fame in these countries to be able to rely on the “special protection” the EUIPO had previously afforded to other famous persons.
To prove Lewis Hamilton’s fame in Bulgaria, Croatia, Estonia, Latvia, and Lithuania, 44IP Limited argued that Lewis Hamilton had many social media followers from various countries and that various newspapers and magazines published in the EU had written articles about him. 44IP Limited also pointed out that, in 2014, Lewis Hamilton was rated as the world’s most marketable athlete.
The board, however, was not satisfied. Specifically, the board held that the data regarding Lewis Hamilton’s social media followers did not show that a sufficient proportion of the Bulgarian, Croatian, Estonian, Latvian, and Lithuanian populations would recognise his name and that articles in newspapers and magazines about him were only likely to have been read by those interested in motor racing. Additionally, the board held that being the world’s most marketable athlete did not mean that Lewis Hamilton would have been considered marketable in Bulgaria, Croatia, Estonia, Latvia, and Lithuania specifically.
The board therefore rejected 44IP Limited’s appeal on the basis that Lewis Hamilton’s fame in all not negligible parts of the EU had not been sufficiently proven to justify allowing 44IP Limited to rely on the “special protection” normally afforded to famous persons.
Conclusions
This decision highlights the difficulties faced by those wishing to register personal names as trade marks in the European Union, including by famous persons who are normally entitled to a “special protection” when applying to do this.
Of particular interest is the need to demonstrate fame in all not negligible parts of the European Union to be able to rely on the “special protection” and the relatively high bar that this requirement appears to impose.
If you are interested in obtaining registered trade mark protection, whether in the UK, the EU, or elsewhere, then Schlich would be happy to work with you to help you do this.
