Lewis Hamilton, the seven-time Formula One champion, lost a trademark dispute for his name in the EU.
The case concerns a EU trademark application for HAMILTON filed in 2014 by the Swiss watchmaker Hamilton International in classes 9 and 14.
The company that manages Lewis Hamilton’s intellectual property rights 44IP filed an application for a declaration of invalidity against all the goods of the EUTM on the grounds laid down in Article 59(1)(b) EUTMR, bad faith, and Article 59(1)(a) EUTMR in conjunction with Article 7(1)(f) EUTMR, registration of the contested mark contrary to public policy.
According to the 44IP, the reason why Hamilton International filed this EU trademark was to secure broader scope of goods because their identical earlier mark was attacked for non-use in a past dispute between both parties.
The EUIPO dismissed this claim. According the the practice of the European Court: ‘the lack of clarity and precision of the terms used to designate the goods or services covered by the registration of a national trademark or a European Union trademark cannot be considered a ground for invalidity of the national trademark or European Union trade mark concerned’.
The Court moreover held that ‘in accordance with its usual meaning in everyday language, the concept of “bad faith” presupposes the presence of a dishonest state of mind or intention, regard must be had, for the purposes of interpreting that concept, to the specific context of trade mark law, which is that of the course of trade. Admittedly, the applicant for a trade mark is not required to indicate or even to know precisely on the date on which his or her application for registration of a mark is filed or of the examination of that application, the use he or she will make of the mark applied for and he or she has a period of five years for beginning actual use consistent with the essential function of that trade mark. (…)
Such bad faith may, however, be established only if there is objective, relevant and consistent indicia tending to show that, when the application for a trade mark was filed, the trade mark applicant had the intention either of undermining, in a manner inconsistent with honest practices, the interests of third parties, or of obtaining, without even targeting a specific third party, an exclusive right for purposes other than those falling within the functions of a trade mark’
In the case at hand, Hamilton International proved that they had been using their trademark for many years since 1892, way before the well-known sportsman were born.
In addition, the EUIPO considered that the earlier marks for LEWIS HAMILTON were not a reason the later mark to be stopped because Hamilton is a widespread name in the English speaking countries.