http://ipkitten.blogspot.com/2023/11/lewis-hamilton-lewis-who.html
Lewis Hamilton is one of the most successful Formula 1 drivers of all time. Yet he does not seem to be famous enough to get his name registered as an EU trade mark. The Board of Appeal of EUIPO (‘BoA’) recently confirmed that his application for ‘LEWIS HAMILTON’ conflicts with the well-known watch maker’s trade mark ‘Hamilton’ (case R336/2022-1).
Background
On 14 July 2015, 44IP Limited (’44IP’), which manages the IP rights of Sir Lewis Carl Davidson Hamilton MBE, filed EU trade mark application no. 014365837 to register ‘LEWIS HAMILTON’ for goods and services in Classes 3, 9, 14, 16, 18, 24, 25, 26, 28, 35 and 41. The application was divided subsequently and the following goods and services remained:
Class 14:
Class 35:
Retail services, mail order services and wholesaling services connected with the sale of precious metals and their alloys, jewellery, cuff links, clocks, wrist watches, watch straps, presentation cases for watches, stopwatches, horological and chronometric instruments, coins, trinkets, key rings and fobs, works of art in precious metals, boxes of precious metal, busts and figurines of precious metal, trophies, badges, medals and awards in precious metals; providing information, commentary, blogs, websites and webpages relating to any of the aforesaid; information, advice and assistance relating to all the aforesaid; including (but not limited to ) all the aforesaid services provided online, and/or provided for use with an/or by way of the internet, the world wide web and/or via communication, telephone, mobile telephones and/or wireless communication networks.
The Swiss watch manufacturer Hamilton International AG filed an opposition on the basis of EUTM no. 013496013 ‘HAMILTON’, registered on 5 May 2015 for goods in Classes 9 and 14, including ‘horological and chronometric instruments, namely watches, watches that communicate data to smartphones, watchbands that communicate data to smartphones, chronographs, clocks’.
Hamilton International AG claimed that its trade mark enjoyed an enhanced distinctive character and a reputation in the EU for watches. 44IP claimed that no likelihood of confusion could arise since Lewis Hamilton was a well-known Formula 1 driver.
The Opposition Division upheld the opposition in its entirety and rejected the application.
IP44 Limited appealed.
The Board of Appeal’s decision
The BoA dismissed the appeal.
The fame of Lewis Hamilton
The Board found that famous persons enjoy special protection when applying for trade marks. Insofar as their name is recognized, this recognition neutralizes any similarity with other signs, which, under normal circumstances, would lead to a likelihood of confusion. The application of this principle required Lewis Hamilton to be famous in the entire EU at the filing date of the contested application, i.e. on 14 July 2015. The BoA summarized Lewis Hamilton’s fame as follows:
Sir Lewis Carl Davidson Hamilton MBE is a British racing driver currently competing in Formula 1, where he is known under the name ‘Lewis Hamilton’ or ‘Hamilton’ alone. Lewis Hamilton has won a joint-record seven World Drivers’ Championship titles, and currently holds the records for the most wins, pole positions and podium finishes, among others. There is no doubt that, within racing motor sports, Lewis Hamilton is a famous person.
Lewis Hamilton joined Formula 1 in 2007. In his inaugural season, he finished runner-up; in 2008, he won his first title to become the then-youngest ever Formula 1 World Champion. In 2014, he won his second title, followed by his third title in 2015. He won four other titles in a row from 2017-2020.
The BoA found that the relevant goods are not only addressed to the EU public interested in motor sports but to the general and/or a specialised public. The easiest way to establish Lewis Hamilton’s fame would have been a survey conducted before the application date covering all EU Member States. Instead, 44IP submitted around 5,500 to 6,000 pages of evidence. The BoA focused its assessment on Bulgaria, Croatia and the Baltic countries Estonia, Latvia and Lithuania, which have the least connection with Formula 1, its drivers and constructers, since none of these countries ever hosted a Formula 1 race, nor did any nationals or constructors from these countries ever participate in a Formula 1 event. The BoA discussed the items of evidence filed by 44IP:
- Statistical data of people watching Formula 1 in 2013 did not include data from Bulgaria, Croatia, Estonia, Latvia and Lithuania.
- Information on sports fans who followed motor sports also covered motor sports other than Formula 1 and did not contain figures for Bulgaria, Croatia, Estonia, Latvia and Lithuania.
- Total visits of the website www.lewishamilton.com from the five EU Member States mentioned before ranged from 1,200 to 8,200 between May 2015 and November 2017, amounting to less than 0.2 % of the total population of these countries.
- Followers or visits of Lewis Hamilton’s Facebook, X and Instagram profiles did either not provide data for all relevant countries, were considered not reliable, or were very low in comparison to the overall population. The BoA noted in this respect that Lionel Messi’s Facebook profile had 106 million followers while Lewis Hamilton was only followed by 6 million people in June 2022. While these figures are outside the relevant period and lack information concerning individual countries, they showed that, despite Lewis Hamilton’s fame as a Formula 1 driver, he is not as famous as sportsmen from more popular sports.
- Information on books published about Lewis Hamilton did not show that they were addressed, purchased or read by the general public.
- Newspaper and magazine articles did not indicate whether they were addressed to Formula 1 fans only or to the general public. They also lacked information on the number of copies sold and their distribution among the general public or the number of online views. Further, the BoA found that not everyone reads the (online) sports section of newspapers. It also considered it important to indicate the time users spent on the internet site to ensure that bot access would not be counted.
- Advertisement and endorsement contracts, including for fuels and lubricants, an insurance company, a hotel chain and watch manufacturers, were considered irrelevant because it was unclear how the public perceived these endorsements and whether they reached the general public at large.
- In 2014, Lewis Hamilton was ranked ‘the most marketable athlete’. This did not convince the BoA because it did not show his perception in the relevant EU Member States.
Overall, the BoA found that it was not proven that Lewis Hamilton would be perceived as a famous person in a non-negligible part of the EU. Therefore, the principles on names of famous people did not apply.
Likelihood of confusion
The BoA focused its assessment of the likelihood of confusion on the public in Bulgaria, Croatia, Estonia, Latvia or Lithuania.
The relevant public’s attention ranged from average to high.
The goods and services were considered either identical or similar to at least an average degree.
Regarding the similarity of signs, the BoA found that the mark ‘Lewis Hamilton’ will be perceived as the name of a specific person and that the word ‘Hamilton’ plays an independent (presumably distinctive) role. The earlier mark ‘Hamilton’ will be understood as a first or last name of English origin. The fact that the later mark includes the entire earlier mark was considered an indication of similarity. Therefore, the BoA concluded, the signs have an average degree of visual and phonetic similarity.
The BoA stated on the conceptual similarity:
Both signs refer to a person with the same family name and could refer to the same person. In any case, the reference to the same family name is not a relevant concept in itself. In the applicant’s best case scenario, the signs cannot be compared conceptually; in a worst case scenario, the sign were conceptually at least similar, since they refer to a person with the same family name. In no circumstances, the signs could be conceptually dissimilar.
For reasons of procedural economy, the BoA did not assess the opponent’s claim of an increased degree of distinctiveness through use and held that the earlier mark had an average degree of inherent distinctiveness.
In the assessment of the likelihood of confusion, the BoA considered that an element with an independent distinctive role may lead the public to believe that the goods or services come from economically linked companies. Further, according to case law, family names are given more weight than first names in numerous Members States. Since the parties did not submit arguments or evidence in this respect, the BoA considered that the family name has no less importance than the first name in neither Bulgaria, Croatia, Estonia, Latvia nor Lithuania. The BoA concluded that consumers could believe that the contested application is a sub-brand of the earlier mark.
The Board added that even if Lewis Hamilton were famous throughout the EU, there would still be a likelihood of confusion. He is often referred to simply as ‘Hamilton’, meaning that the general public would associate ‘Hamilton’ with ‘Lewis Hamilton’ and, thus, could believe that the earlier mark is endorsed by Lewis Hamilton. This would result in a likelihood of confusion. The BoA distinguished this case from the earlier cases on Barbara Becker (discussed here) and Miley Cyrus (discussed here). The latter are not just known by their last names Becker and Cyrus but by their full names.
Comment
Famous people, like ‘ordinary’ people, do not have an unlimited right to use their name as a trade mark. Art. 14(1)(a) EUTMR merely allows the use of one’s name (even if not famous) in the course of trade, provided that the use is in accordance with honest practices in industrial or commercial matters. This exception does not apply in opposition proceedings (case T-863/19, paras. 128 et seqq.). It is also doubtful whether this provision allows the use of one’s name as a classic trade mark (i.e. a brand) because the CJEU held that it may violate honest practises in industrial and commercial matters (Art. 14(2) EUTMR) if the use creates the impression that there is a commercial connection between the third party and the trade mark owner (Gilette, case C-228/03, at para. 49). This seems to be just another way of defining a likelihood of confusion.
The decision also shows how challenging it is to prove fame (or reputation or acquired distinctiveness) throughout the entire EU.
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