Formula One Licensing BV v Idea Marketing SA: Trade Mark Opposition for F1H20
Formula One Licensing B.V. (the appellant), which manages trademarks for the FIA Formula One World Championship, opposed the registration of the trade mark “F1H20” by Idea Marketing S.A. (the respondent), the global promoter for the F1 Powerboat World Championship, in Singapore. The Assistant Registrar of Trade Marks initially dismissed the opposition, and the appellant's appeal to the High Court was also dismissed by Tay Yong Kwang J. The court found that the appellant's plain F1 mark was descriptive and had not acquired distinctiveness as of the relevant date, and therefore was not a well-known trade mark that could be used to oppose the registration. The court also found that the application mark “F1H20” was dissimilar to the appellant's registered marks and that there was no likelihood of confusion.
1. Case Overview
1.1 Court
High Court1.2 Outcome
Appellant's case dismissed on all grounds; respondent's application mark can proceed to registration.
1.3 Case Type
Intellectual Property
1.4 Judgment Type
Written Judgment
1.5 Jurisdiction
Singapore
1.6 Description
Trade mark opposition case where Formula One Licensing BV opposed Idea Marketing SA's registration of 'F1H20'. The court dismissed the opposition.
1.7 Decision Date
2. Parties and Outcomes
| Party Name | Role | Type | Outcome | Outcome Type | Counsels |
|---|---|---|---|---|---|
| FORMULA ONE LICENSING BV | Appellant | Corporation | Appeal Dismissed | Lost | Raymund A. Anthony, Max Ng |
| IDEA MARKETING SA | Respondent | Corporation | Application Mark Can Proceed to Registration | Won | Dedar Singh Gill, Gabriel Ong |
3. Judges
| Judge Name | Title | Delivered Judgment |
|---|---|---|
| Tay Yong Kwang | Judge | Yes |
4. Counsels
| Counsel Name | Organization |
|---|---|
| Raymund A. Anthony | Gateway Law Corporation |
| Max Ng | Gateway Law Corporation |
| Dedar Singh Gill | Drew & Napier LLC |
| Gabriel Ong | Drew & Napier LLC |
4. Facts
- Formula One Licensing B.V. manages the trade marks for the FIA Formula One World Championship.
- Idea Marketing S.A. has been the global promoter for the F1 Powerboat World Championship since 1993.
- Idea Marketing S.A. applied to register “F1H20” in Singapore on 28 March 2007.
- Formula One Licensing B.V. opposed the registration of “F1H20”.
- The Assistant Registrar of Trade Marks dismissed the opposition.
- The appellant’s first “F1” night race took place only in 2008.
- The plain F1 mark was descriptive and had not acquired distinctiveness as at the relevant date.
5. Formal Citations
- Formula One Licensing BV v Idea Marketing SA, TA No 22 of 2013, [2015] SGHC 263
- In the Matter of a Trade Mark Application by Idea Marketing S.A. and Opposition thereto by Formula One Licensing B.V., , [2013] SGIPOS 8
- Formula One Licensing B.V. v Idea Marketing S.A., , [2015] SGIPOS 7
6. Timeline
| Date | Event |
|---|---|
| Idea Marketing S.A. became the global promoter for the F1 Powerboat World Championship. | |
| Federation Internationale de l'Automobile granted Formula One Licensing B.V.’s group of companies the right to organise and commercially exploit the championship. | |
| Priority date for the application mark 'F1H20'. | |
| Idea Marketing S.A. applied to register “F1H20” in Singapore. | |
| “F1” was registered. | |
| First F1 night races started in Singapore with the 2008 Formula 1 Singtel Singapore Grand Prix. | |
| “F1H20” was accepted and published for opposition purposes. | |
| The Assistant Registrar of Trade Marks heard the parties. | |
| Assistant Registrar of Trade Marks issued grounds of decision, dismissing the opposition. | |
| High Court made orders regarding the appellant's application to adduce further evidence. | |
| Matter remitted to the Trade Marks Registry for a rehearing before the same AR with the further evidence. | |
| Assistant Registrar of Trade Marks maintained her decision, which was elaborated on in her grounds of decision. | |
| Court of Justice of the European Union upheld the decision dated 20 November 2012 of the Fourth Board of Appeal of OHIM. | |
| High Court heard TA 22 as an appeal against both the 2013 GD and the 2015 GD. | |
| Judgment reserved. |
7. Legal Issues
- Trade Mark Opposition
- Outcome: The court dismissed the opposition, finding that the appellant's plain F1 mark was descriptive and had not acquired distinctiveness, and that the application mark was dissimilar to the appellant's registered marks.
- Category: Substantive
- Sub-Issues:
- Similarity of marks
- Similarity of goods or services
- Likelihood of confusion
- Goodwill
- Misrepresentation
- Damage
- Bad faith
- Well-Known Trade Mark
- Outcome: The court held that the appellant's plain F1 mark was not a well-known trade mark as of the relevant date.
- Category: Substantive
- Sub-Issues:
- Distinctiveness
- Reputation
- Relevant sector of the public
- Passing Off
- Outcome: The court found that the appellant had not established the requisite goodwill in Singapore as of the relevant date.
- Category: Substantive
- Sub-Issues:
- Goodwill
- Misrepresentation
- Damage
- Bad Faith
- Outcome: The court found that the appellant had not adduced any evidence to prove bad faith on the part of the respondent.
- Category: Substantive
8. Remedies Sought
- Prevention of Trade Mark Registration
9. Cause of Actions
- Trade Mark Opposition
- Passing Off
10. Practice Areas
- Trade Mark Opposition
- Intellectual Property Litigation
11. Industries
- Sports
- Entertainment
- Automotive
- Powerboat Racing
12. Cited Cases
| Case Name | Court | Affirmed | Citation | Jurisdiction | Significance |
|---|---|---|---|---|---|
| In the Matter of a Trade Mark Application by Idea Marketing S.A. and Opposition thereto by Formula One Licensing B.V. | Assistant Registrar of Trade Marks | Yes | [2013] SGIPOS 8 | Singapore | The judgment being appealed from. |
| Formula One Licensing B.V. v Idea Marketing S.A. | Assistant Registrar of Trade Marks | Yes | [2015] SGIPOS 7 | Singapore | The judgment being appealed from. |
| Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another | High Court | Yes | [2014] SGHC 252 | Singapore | Cited for the principle that an unregistered trade mark will necessarily imply the exclusion of an unregistered trade mark that is deemed to be unregistrable under s 7 of the TMA. |
| Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal | Court of Appeal | Yes | [2014] 1 SLR 911 | Singapore | Cited for the definition of distinctiveness and the step-by-step approach to an analysis under s 8(2)(b) of the TMA. |
| Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber and Franz Attenberger | European Court of Justice | Yes | [1999] ETMR 585 | European Union | Cited for the interpretation of Article 3(3) of the First Council Directive 89/104/EEC, similar to s 7(2) of the TMA. |
| Novelty Pte Ltd v Amanresorts Ltd and Another | Court of Appeal | Yes | [2009] 3 SLR(R) 216 | Singapore | Cited for guidance on whether a trade mark is well known in Singapore under s 2(7) of the TMA. |
| Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal | Court of Appeal | Yes | [2013] 2 SLR 941 | Singapore | Cited for the principles in assessing the similarity between two contesting marks. |
| Sarika Connoisseur Café Pte Ltd v Ferrero SpA | High Court | Yes | [2013] 1 SLR 531 | Singapore | Cited for the quantitative assessment of the relative number of syllables which the two marks have in common. |
| Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) | High Court | Yes | [2012] 3 SLR 193 | Singapore | Cited regarding the 'first syllable' principle in trade mark assessment. |
| The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd | High Court | Yes | [2015] SGHC 77 | Singapore | Cited regarding the dominant and distinctive components of the marks when read out. |
| The Singapore Professional Golfers’ Association v Chen Eng Waye and others | High Court | Yes | [2013] 2 SLR 495 | Singapore | Cited for the three-step process in the law of passing off. |
| CDL Hotels International Ltd v Pontiac Marina Pte Ltd | Court of Appeal | Yes | [1998] 2 SLR 550 | Singapore | Cited for the principle that pre-business activities can generate goodwill. |
13. Applicable Rules
| Rule Name |
|---|
| No applicable rules |
14. Applicable Statutes
| Statute Name | Jurisdiction |
|---|---|
| Trade Marks Act (Cap 332, 2005 Rev Ed) | Singapore |
15. Key Terms and Keywords
15.1 Key Terms
- Trade mark
- Trade mark opposition
- Well-known trade mark
- Distinctiveness
- Passing off
- Goodwill
- Likelihood of confusion
- F1
- F1H20
- Earlier trade mark
- Relevant date
- Descriptive mark
15.2 Keywords
- Trade mark
- Opposition
- F1
- F1H20
- Formula One
- Powerboat
- Distinctiveness
- Passing off
- Singapore
16. Subjects
- Trade Mark Law
- Intellectual Property
- Trade Mark Opposition
17. Areas of Law
- Trade Mark Law
- Intellectual Property Law
- Passing Off