Lewis Hamilton lost a dispute for his name in the EU

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.

Source: ESPN.com

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Paintings and watches – a dispute from Denmark

The Court in Denmark has ruled in a case concerning a copyrightable work transformed into another work. The case at hand focus our attention on the following painting by artist Tel R:

This painting has been purchased for $90 000 by Dann Thorleifsson and Arne Solmunde Leivsgarð, founders of the watch manufacturer company Letho.

They launched a campaign where the winners can order watches, which dials are made of small painting parts.

According to the artist, this was a completely new way of using of his painting that transforms the original work. He claimed that copyright permission for such use was needed.

The Letho’s position was that in this case there was a destruction of the work which according to the Danish law does not constitute copyright infringement.

The court ruled that there was a copyright infringement because the painting was made available to the public in a changed form, which requires copyright permission.

Source: WIPR.

Watches can be copyrightable in Sweden

Hans Eriksson and Petter Larsson (Westerberg & Partners Advokatbyrå Ab) published quite an interesting article for Lexology that concerns a lawsuit for copyright infringement in Sweden.

Back in 2016, a local retailer started to import watches with a minimalistic design that resembled such produced and offered by the well-known Sweden watch manufacturer Daniel Wellington.

A copyright lawsuit followed. The defendant position of the retailer was that the watch design at hand wasn’t original taking into account prior art which clearly showed a variety of other watches on the market that shared similar design characteristics.

Based on this, the first instance court dismissed the copyright infringement claim.

The decision was appealed. The Patent and Market Court of Appeal came to the conclusion that there was a copyright infringement. The reason was that the authors of Daniel Wellington’s watch had made small design choices to create the watch which was sufficient for the watch originality.

Moreover, the court addressed the defendant’s mosaic of prior art components by stating that the fact that a product consists of previously known elements does not rule out copyright protection if it displays originality when considered in its entirety.

“Swiss Military” – between watch industry and the Army

The Federal Administrative Court of Switzerland ruled on a lawsuit between the Swiss Army and the Swiss watch producer Charmex.

The reason for this conflict was the fact that Charmex as an owner of a registered trademark ‘Swiss Military’ for watches filed an opposition against Army’s application for an identical mark for identical goods.

The Patent Office upheld this opposition because of which the Army appealed.

According to the Federal Administrative Court, the Army has the right to register such a trademark. What’s more, only the Army has to have the right to use this mark. The Court considers that there is no evidence suggesting that consumers connect the term ‘Swiss Military’ with the watch producer rather than the Swiss Army.

According to Charmex this decision is quite disappointing for them taking into account all efforts and investments they made in their brand throughout the years of its existence on the market.

Source: WIPR.