- What’s in a name? The Trade Mark appeal in respect of the “Hamilton” mark
What’s in a name? The Trade Mark appeal in respect of the “Hamilton” mark
What’s in a name? The Trade Mark appeal in respect of the “Hamilton” mark20th November 2020 - Published by Kuits intellectual property team
Lewis Hamilton appears to have become accustomed to winning everywhere, apart from in legal proceedings. A dispute between the holding company of his intellectual property rights 44IP and Hamilton International AG (HIA) has finally concluded after a three-year battle, with the dismissal of 44IP’s appeal contesting a trade mark registration by HIA.
The decision of the EU Intellectual Property Office Board of Appeal is a reminder that being famous and having a reputation is not enough to have a monopoly over a name.
What was the dispute?
The dispute arose when HIA sought to register the mark “Hamilton” in a number of different classes. HIA is a reputable luxury jewellery designer and has been producing jewellery bearing the Hamilton mark since 1892.
44IP tried to remove the trademark on the basis that HIA were attempting to register this mark in bad faith and that it was contrary to public policy. The public policy point was that 44IP believed that HIA were attempting to benefit from the 5-year non-use grace period given to new registrations.
It was decided by the Board of Appeal that the appeal would not succeed on the grounds of bad faith; the meaning of this phrase is that a party has acted with a degree of dishonesty which would “fall short of the standards of acceptable commercial behaviour”.
The Board of Appeal noted that there was no absence of genuine intent by HIA to make use of the Hamilton mark and 44IP themselves accepted the fact that there was an earlier use of the mark. The conclusion was that the argument to prevent an application solely to extend the grace period was not founded on any factual basis. For this reason, there can be no bad faith for non-use if the mark has been used.
In particular, it appears that IP44 relied on the overlap between the word “Hamilton” and the rights of the driver, “Lewis Hamilton”. The Board of Appeal held that due to the fact that this is a rather common surname in English speaking countries, there can be “no natural right for a person to have his or her own name registered as a trade mark when that would infringe a third party”.
Furthermore, the Board of Appeal held that, due to the mark being used by HIA since 1982, which was significantly before the date on which Lewis Hamilton was born, there is no real basis for cancellation.
An interesting point to note is that 44IP appear to have relied on the natural rights of Lewis Hamilton, but Board of Appeal stated that “these rights remain totally unsubstantiated. Further explanation was needed as to what the legal concept was to invoke such “personality rights of an individual person”.
Important take away
In conclusion, it was held that the cancellation was merely on an argument of bad faith and that the declaration that the HIA sign was contrary to public policy “improperly impedes fair competition and a free movement of goods”.
The important point to take away from this decision is that simply claiming to have rights and a reputation in a name, which could potentially affect third parties, is not a good enough reason for you to prevent others from seeking a trade mark registration.
Get in touch with an intellectual property solicitor in Manchester
If you would like advice on anything mentioned above, please contact IP Associate Humna Nadim on 0161 838 7816 or email@example.com.