Sectors

Services

Background
29 February 2024

Lewis Hamilton fails to qualify

Lewis Hamilton has lost his appeal against partial refusal to register his name as a trade mark in the EU. The Board of Appeal (“BoA”) decided that he did not qualify for recognition as a famous person throughout the EU and there was a likelihood of confusion with an earlier EU registration for HAMILTON.

The background

Lewis Hamilton’s management company, 44IP Ltd (“the applicant”), applied to register LEWIS HAMILTON for multiple goods and services, including Precious metals and their alloys; jewellery; precious stones; clocks; wrist watches; horological and chronometric instruments; coins; trinkets; key rings and fobs; works of art in precious metals; trophies, medals and awards in precious metals; parts, fittings and accessories for all the aforesaid, and the retailing, mail ordering and wholesaling of these items.

The application was filed on 14 July 2015 and opposed by Hamilton International AG (“the opponent”), a Swiss watch manufacturer with a longstanding history and now a member of the Swatch Group. Opposition was based on an earlier EU registration for HAMILTON which covered some identical and similar goods to LEWIS HAMILTON.

After some preliminary skirmishes involving the validity of the opponent’s EU registration, the opposition was finally decided in the opponent’s favour on 21 February 2022. The applicant appealed on several points, the most interesting of which was the claim to Lewis Hamilton’s fame in the EU and the evidence submitted to support this claim.

Legal principle of fame

It is an established principle in EU law that famous people enjoy special consideration when applying for their names as trade marks. Insofar as their name may be recognised by the relevant public, that recognition is capable of neutralising similarity with other earlier registered marks which would, under normal circumstances, lead to a likelihood of confusion and refusal of the application. The law has been developed by cases involving Lionel Messi (see Inside IP Article here), Miley Cyrus and Barbara Becker.

For an applicant to benefit from this principle, they must prove their fame in the entire European Union in the eyes of the relevant public (the consumer of the goods/services applied for) at the date of the relevant application.

The appeal decision

The Board of Appeal held that Lewis Hamilton’s fame had not been established throughout the EU at the application date.  It then decided the case using normal considerations by comparing the respective marks (averagely similar), goods and services (at least averagely similar) and considering the likelihood of confusion. It decided the consumer might believe LEWIS HAMILTON is a sub-brand of HAMILTON and that both brands belong to the same business or to economically linked businesses. This represents a likelihood of confusion in the marketplace.

The appeal failed and LEWIS HAMILTON was not registered for the opposed goods and services.

Examination of fame

The BoA remarked that the “easiest” way to prove fame would have been for the applicant to conduct an EU-wide survey as at the application date in 2015. The applicant instead filed copious evidence (around 6,000 pages) some of which was specific to Lewis Hamilton, including press coverage, social media and awards, and some of which related more generally to Formula 1, including statistics on its geographical reach, spectator attendance and TV viewing figures.

The BoA critically examined each tranche of evidence.  It noted that F1 Grand Prix coverage is not always aired on free to view TV and in some EU states it is behind a paywall. That affects the level of recognition of individual drivers by the public. The races themselves are limited in number and over the relevant period they took place in only seven member states. Participating drivers came from eleven member states and constructing teams from six, with a degree of overlap.  These statistics were compared unfavourably with the potential reach of footballers whose sport enjoys higher popularity, visibility and audience than F1.

The BoA focussed its attention on Bulgaria, Croatia and the Baltic EU member states, noting that these represent almost a fifth of the number of EU states and they are approximately 5% of the total population. None of them has hosted an F1 race, nor have they ever been home to a participating driver or constructor team.  In contrast to other EU states, the applicant did not provide numerical data for F1 viewers or followers of motor sport in these countries. The figures for visitors to Lewis Hamilton’s website from these countries were described as “not impressive”. Likewise, the percentage population of followers on his Facebook, Instagram and X (Twitter) accounts was either not provided or else amounted to a very small fraction.  Further, Lewis Hamilton’s overall Facebook following was unfavourably compared to that of Lionel Messi who, in 2022, apparently had 17 times more followers.

Even where some evidence was considered positively, such as the number of books published about Lewis Hamilton (“quite impressive”), it was criticised for not being a statistic which applied throughout the EU. There was no evidence to show that readers transcended sports enthusiasts, that the books were translated into the languages of Bulgaria, Croatia and the Baltic states, or that they were read in English by individuals from these countries. Finally, whilst Lewis Hamilton was rated as the world’s most remarkable athlete in 2014, that did not in itself lead to any specific conclusion about his perception in individual member states.

Because of the above, it was held that the applicant had not proved Lewis Hamilton’s fame across the whole of the EU.

Comment

Proving fame to the public throughout the EU is a very high hurdle. Looking at the areas where Lewis Hamilton was found wanting, it may be that only a very small number of global superstars meet the required standard. Fame is likely to be more achievable if the area of activity is universally recognised and one to which the public has ready access such as certain forms of entertainment, football, modelling and perhaps politics. Survey evidence as mentioned by the BoA may be considered gold standard but it is notoriously costly to obtain and very often subject to criticism when filed before a tribunal, meaning that real care is needed when formulating questions and approaches. However, if proven, EU fame can be a powerful trade mark weapon in the armoury of the chosen few.