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Trade mark update: The case involving Lewis Hamilton and the future of EU trade mark protection from 1 January 2021.

Disputes / 30 November 2020

In this Solutions update, we discuss the recent decision handed down by the EU’s Intellectual Property Office (“EU IPO”) relating to F1 champion, Lewis Hamilton’s trademark battle with Swiss luxury watch manufacturer, Hamilton International and the future of EU trade mark protection the end of the transition period.

The ’Hamilton’ case
In a three-year legal battle relating to trade marks, F1 champion, Lewis Hamilton (via his company 44IP) sought to prevent the watch maker, Hamilton International, from registering the ‘Hamilton’ trademark throughout Europe, which it attempted to do in 2017. The key issue in the case was whether the trade mark ‘Hamilton’ was being used unlawfully, in bad faith and to frustrate fair competition.

The EU IPO dismissed Mr Hamilton’s company’s claim, on the basis:

—  Lewis Hamilton had no ‘natural right’ to protect his surname, Hamilton, which is “common” in English-speaking countries, as this would infringe third parties’ rights.

—  Hamilton International’s company name dates back to 1892, when the company was originally established in the US and then moved to Switzerland in 2003, long before Lewis Hamilton was born.

—  There had been no bad faith on the part of Hamilton International and that in fact, they had demonstrated a significant economic activity in the horological field since 1892.

It is important to note the contested mark consisted solely of the word ‘Hamilton’ as opposed to ‘Lewis Hamilton’, which may have had a different outcome.

In securing its European trade mark, Hamilton International now has the exclusive rights to use the ‘Hamilton’ name and to sell watches on accessories across the continent. The EU IPO also ordered 44IP to pay Hamilton International legal costs.

The future of EU trade mark protection
Businesses and organisations can currently apply to the Intellectual Property Office (“IPO”) to register a UK trade mark and to the EU IPO to register an EU trade mark (“EUTM”).

From 1 January 2021, there will be several key changes relating to trade marks, including:

—  EUTMs will no longer protect trade marks in the UK.

—  That said, under the Withdrawal Agreement Act, on 1 January 2021, the IPO will create a comparable UK trade mark for all right holders with an existing EU trade mark.

—  Existing, and new, EUTMs will continue to protect trade marks in EU member states.

—  UK businesses will still be able to apply to the EU IPO for an EUTM.

The Government has also outlined comprehensive rules for various related scenarios such as pending EUTM applications (as a UK trade mark), priority and seniority claims/dates, pending cancellation actions, use and reputation, assessment of reputation, opting out of the comparable UK trade mark, registration numbers for comparable marks, renewals, expiry, certification and collective marks, licences, security interests and assignments. You can find a link to the Government’s full guidance here.

Our Disputes team and Business & Finance teams are highly experienced in advising businesses on intellectual property issues including trade marks. If you would like advice on protecting a trade mark and/or how Brexit may impact your brand reputation in the EU, please get in touch.

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