Maxed out of air

For fans of Formula 1 you will be familiar with the current world champion Red Bull driver Max Verstappen. However, what some of you may not know is that Max has recently stopped but not from long term track rival Lewis Hamilton but rather from the biggest sports brand on the planet Nike.

That’s right, despite his on-track dominance, Max encountered a road block in his pursuit for a clothing brand which he intended to call ‘Max 1’. Nike took exception to the name saying it was too similar to their own well-known brand ‘Air Max’ and argued it would cause confusion among consumers.

Nike officially complained to The Benelux Office for Intellectual Property (BOIP) (The office responsible for trade marks in Belgium, The Netherlands and Luxembourg), and successfully blocked Max from registering his brand. The report by the BOIP found that:

“Both signs contain the word ‘MAX’, albeit in different places. The words used by Nike, ‘AIR’ and ‘MAX’ have equal weight in the overall impression. Whereas in Max’s brand there is emphasis on the word ‘MAX’. However, the number 1 will be regarded as a specification of ‘MAX’, and so to that extent the signs agree.

Both marks are visually and aurally similar to a degree, additionally, the goods in question from both Nike and Max, are partly identical and partly similar.”

In determining the above factors, the BOIP concluded that it is common practice in the clothing sector for the same mark to be configured in different ways, this could lead the relevant public into thinking that Max’s sign is a sub-mark of Nike’s. As a result, a likelihood of confusion between the brands was found to be likely as the public would be led to believe that the goods covered by the trade marks of both Nike and Max belong to the same enterprise or, alternatively, stem from companies with economic ties.

Max will now have to decide if he wants to appeal the decision of the BOIP, however, before he does, he may wish consider the lessons learnt from his fellow rivel Lewis Hamilton, who has himself also face difficulty with trying to brand his name.

In 2017, Lewis initiated a case against luxury watch brand Hamilton over their registered trade mark ‘HAMILTON’. Lewis attempted to invalidate the brand’s registered rights in Europe by alleging that application was done in bad faith and impeded fair competition.

However, Hamilton defended their right to use the name, citing their use of it since 1892, nearly a century before Lewis was even born. Consequently, the EUIPO rejected Lewis’ plea emphasising that no individual holds an inherent right to trade mark their name where it infringes upon the rights of a third party.

If you have any questions about your brand or wish to register your trade mark, don’t hesitate to reach out to us. Briffa is always on hand to help with all things IP. We can be reached at info@briffa.com or on 0207 096 2779 for a free consultation.

Written by Alex Welham – Solicitor