Formula One Licensing BV V OHIM

 

CJUE 24.05.2012:

 

  • Parties: Formula One Licensing BV v. OHIM

    Subject: Validity of a national trademark/ECFI jurisdiction

    Trademark:   

  •  

 

 

 

Racing-Live SAS (later replaced by Global Sports Media Ltd) filed the EC trademark  

for its products and services in classes 16, 38, and 41, limited to the field of Formula 1.

 

Formula One Licensing BV (FOL) opposed to this trademark application on the basis of its prior F1 marks registered in various EU countries and its EC trademark F1, on the grounds of a risk of confusion and infringement on the renown of its marks.

 

The Opposition Division of the OHIM held that there was a risk of confusion between the F1 marks and the trademark application at issue, and that the opposition was well founded.

 

The Board of Appeal of the OHIM reversed this decision, holding that the marks could not give rise to a risk of confusion, in particular because the common element, F1, is descriptive in the context of the trademark application at issue.

 

The ECFI affirmed this decision, dismissing the appeal submitted by FOL.

 

FOL then sought review before the Court of Justice of the European Union (CJUE).

 

The CJUE noted that the validity of an international or national mark cannot be challenged in the context of EC trademark registration proceedings, but only as part of a cancellation action in the Member State in question.

 

The CJUE held that the ECFI was required to acknowledge a certain degree of distinctiveness between the prior national F1 trademarks, and that, in holding that the term was not distinctive in the context of the application at issue, deprived the prior F1 marks of all validity, which was beyond its jurisdiction.

 

The CJUE thus reversed the decision and remanded the matter to the ECFI.

 

 

 

 

 

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