HAMILTON V HAMILTON: HOW WATCHMAKER BEATS F1 CHAMPION…IN COURT

di Beatrice Marone

Who would have thought that the first stop in the chain of successes established by Lewis Hamilton wouldn’t have come from the racing circuit but from a court?

In case R-351/2020-4, on 20th October 2020, the EUIPO Fourth Board of Appeal ruled on the cancellation proceeding no. 17968 C brought by 44IP Limited against the EUTM registration n. 13496013 relating to the word mark “HAMILTON”, owned by Hamilton International AG.

44IP Limited acted as the holder of the IP rights related to the racing driver Lewis Hamilton and is currently the proprietor, in several jurisdictions, of trademark “LH44”, associating the initials of the seven-times F1 Championship winner with the driver number he chose in 2014 to compete with until the end of his career.

Hamilton International AG, founded in Pennsylvania in 1892, has an history in the watch industry with appearances even on the big screen but it is also committed to innovation since the launch of the first electric timepiece in 1957 and the LED digital watch in 1970. It is part of the Swiss Swatch group since 2007.

The centre of the cancellation claim has been the above-cited EU trademark no. 13496013 “HAMILTON”, registered in 2015 for goods in class 9 and 14. In 2017, after receiving from Hamilton International AG an opposition to the registration of its trademark application n. 14365837 “LEWIS HAMILTON”, 44IP Limited filed an application for declaration of invalidity. Highlighting the existence of an earlier registration both for the same word and by the same proprietor for goods in the sole class 14, the legal team of 44IP Limited argued that the subsequent registration was only an attempt to extend the grace period for non-use, pointing out bad faith and impediment of fair competition. Following the arguments of Hamilton International AG, which showed that the update of the list of goods in class 14 was due to both technological development in the horological field and to the outcome of the IP Translator judgement and, at same time, filed evidence of genuine use of the contested trademark, the Cancellation Division rejected the invalidation action in 2019.

On February 2020, 44IP Limited filed an appeal requesting the Board to annul the above-cited decision in its entirety. On which grounds?

• unsupported and inconsistent assertions of good faith by the proprietor;
• wrong interpretation of the list of goods as sufficiently different from the earlier registration and no evidence of its use for certain categories of goods;
• revocation proceedings of the earlier registration and consequences of SkyKick judgement not taken into due consideration by the Cancellation Division.

The Board considered the appeal not well-founded and dismissed it, ordering the appellant to bear the costs of the proceedings, after pointing out the subsequent points.

There is no need for an EU trademark to give legitimate reasons for the filing of an application because the burden of proof on the fact that the proprietor acted in bad faith at the moment of filing is on the cancellation applicant (Pelikan, T-136/11) and, moreover, the same cancellation applicant has no title whatsoever to intrude the proprietor’s strategy regarding both the present and the intended use of the trademark. To analyse whether the trademark applicant is acting in bad faith within Article 59(1)(b) EUTMR it is necessary to take into account all the relevant factors of the specific case (Lindt Goldhase, C-529/07): none of the ones raised by the cancellation applicant has been found in the case at hand and these are the only ones that the Board can assess, as stated in Article 95(1) EUTMR.

The Board also highlighted that 44IP Limited itself admitted, repeatedly, the use both of the earlier registration and of the contested mark and this fact, along with the evidence provided by Hamilton International AG, conducted to the recognition of the genuine use, concluding the paragraph with the sentence “There can be no bad faith for non-use if there is use”.

Regarding the revocation proceedings of the earlier registration, the Board found that they were started by the same cancellation applicant and are still ongoing. Briefly on the SkyKick judgement (C-371/18), the Board emphasised how it was rendered four months before the cancellation applicant’s statement of grounds and how the arguments upon which both the proceedings at hand and the nominal case were based have been dismissed by the CJEU.

In conclusion, not even the argument on the IP rights of Lewis Hamilton is acceptable because the contested mark consists only of the word “HAMILTON”, which is reckoned as a “rather common surname in English-speaking countries”. The Board also reminds how, when the registration of the name could lead to infringement of third parties’ rights, there is no natural right to the same registration (ARRIGO CIPRIANI/CIPRIANI, R 406/2018-4). Furthermore, the mark has been used since 1892, almost a century before the birth of the natural person Lewis Hamilton. Finally, the Board found that 44IP Limited failed to explain under which legal concept a company is able to invoke the personality rights of an individual person.

The present judgement gives precious hints about the development of IP rights in the ever-growing number of occasions when celebrities, and especially sports champions, are rushing to ask for their protection.