F1 not 1st off the grid

Speed matters – and not just on the track! Liberty Media has recently invested in rebranding Formula One after it bought the sport in 2017 for $8bn (£6bn). It decided to ditch the previous logo for a new one to the dismay of many; Sebastian Vettel stated that he “…liked the old one better” and Lewis Hamilton remarked that “the old one was iconic, and the new one isn’t”. However, this is the least of Formula One’s problems as it emerges that stationary giant 3M, creator of Post-It Notes, has filed an opposition to Formula One’s European Union trade mark application for the new logo as it is similar to the trade mark that 3M filed for first.

Formula One’s new logo

Below, the two designs in question. It is clear that Formula One’s ‘F’ symbol has a similar curvature to the trade mark registered by 3M. Formula One’s design also has the ‘F’ symbol made up of two separate shapes that have a space between them. Although 3M’s trade mark has a larger space between the two shapes, both signs are very similar.

Trade mark registered by 3M

Formula One filed a trade mark application for this sign

A trade mark is registered in relation to a class of goods or services. The trade mark grants 3M the right to prevent third parties from using the same (or similar) sign for identical (or related) goods/or services in the course of trade. 3M uses the sign above on its brand Futuro which markets compression tights and is registered for those goods. Formula One’s application is in respect of various classes, but it excludes the class that 3M have applied for. 3M would have to show that there would be a likelihood of confusion between the brands, because the similar sign will be used by Formula One on similar goods. 3M filed its application in February 2017 and the sign was registered in June 2017. Formula One filed its application in November 2017 which means that 3M has priority over Formula One.

Formula One’s previous logo was designed by Carter Wong and was first introduced in 1994. Whilst the designer is sad to see that Formula One is no longer using the logo, it understands the importance of rebranding to reflect evolution.

Formula One’s previous logo designed by Carter Wong

Briffa Comment

This case highlights two key points. Firstly, it is important to be aware of trade marks that are already out there. It is better to avoid infringement than deal with challenges later down the line. In the case, 3M’s sign was registered in June 2017 and Formula One filed an application after this date. Although it did not apply to register it in the same class of goods as 3M, the goods may be seen as related. This in turn may cause confusion to the public as the signs look similar.

Secondly, it is important to file an application as soon as possible and preferably after making a search and early in the product development process. Late or badly researched filings can face opposition and may not be useable. It’s not just embarrassing for a business to find itself in this situation. It is financially damaging as well.

Briffa advises on all aspects of copyright law and practice, including contentious (e.g. infringement) and non-contentious (e.g. licensing) matters. If you have any queries regarding copyright or any other intellectual property rights, please do not hesitate to get in contact with us and we will be happy to assist. We offer free 30-minute consultations to all new clients at our offices in the Business Design Centre in Islington, London.