Watch this space: Hamilton trade mark does not belong to Lewis
The name ‘Hamilton’ means a lot of things to a lot of people. To F1 motor racing fans, it clearly is a reference to British racing car driver Lewis Hamilton. For watch aficionados, it may be a reference to watch company Hamilton International, which was founded in 1892 and subsequently acquired by Swiss watch maker Swatch Group. For some, it is their first name or surname, for others it is a ground-breaking musical, and for many, it is simply the name of the town in which they live.
A recent case before the European Union Intellectual Property Office (EUIPO) considered the attempt by Lewis Hamilton’s rights management company (44IP) to prevent registration of the HAMILTON trade mark by Swatch Group.
Racing against the clock
The trade mark dispute between 44IP and Swatch Group arose when 44IP attempted to prevent Swatch Group from registering a trade mark in Europe for watches and timepieces under the band ‘Hamilton International’. It is worth noting that although Lewis Hamilton does not manufacture or sell watches, he is sponsored by another Swiss watch maker.
44IP argued that the Hamilton International trade mark was filed in bad faith (also being a ground of trade mark opposition in Australia) and that the application was contrary to ‘fair competition’ in relation to the registered trade mark LEWIS HAMILTON (presumably comparable to the ‘contrary to law’ or ‘likely to deceive or cause confusion’ grounds of opposition in Australia).
44IP also argued that the brand Hamilton International had never been used commercially as a trade mark. The EUIPO rejected this argument based on the longstanding use of the Hamilton International brand by the USA entity Hamilton International and subsequently by Swatch Group after its acquisition of Hamilton International in 1974.
The EUIPO found in favour of Swatch Group. In doing so, it ruled that 44IP’s trade mark rights in LEWIS HAMILTON did not extend to the word HAMILTON. The EUIPO noted that HAMILTON is a common surname in English speaking countries. The EUIPO also found that there was no bad faith in the application to register HAMILTON INTERNATIONAL, noting the name had been used on relevant goods since 1892.
There are a wide number of interesting trade mark issues arising from the dispute between 44IP and Swatch Group, including:
- Can a famous person obtain monopoly rights over their common surname?
- Does a trade mark for a first name and last name prevent others from using just the last name on goods/services?
- What legal rights do celebrities have in their names?
- Are there special rights applying to ‘famous’ trade marks?
HAMILTON – can it be a trade mark?
The relevant trade mark in the dispute between 44IP and Swatch Group was HAMILTON INTERNATIONAL, and not HAMILTON. Since Hamilton is a common surname and the name of several towns, could a person obtain monopoly rights to a surname?
In Australia, whether a surname can be registered as a trade mark (thereby granting a person monopoly rights in that name for specified goods or services) will depend on the application of section 41 of the Trade Marks Act 1995 (Cth) (the Act). The test under section 41 of the Act is whether the name is inherently adapted to distinguish the relevant goods and services.
As a simple rule of thumb, the more common the surname, the less likely it can be protected (on its own) as a trade mark in Australia. The rules relating to surnames under Australian trade mark law hold that surnames always have at least a limited degree of adaptation to allow for registration. To determine exactly how common the surname is, until recently, the Australian Trade Marks Office (ATMO) used the Australian Surname Register as a tool to consider how many times that name appears (SFAS Score). The SFAS Score was recently phased out due to unreliability and privacy concerns.
The principles relating to whether a surname will be accepted in the first instance in Australia can now be considered in the ATMO decision of Vectura GmbH (2016) ATMO 77, which related to an application to register the word FOX. Here, the ATMO accepted the application (despite a high SFAS Score) since the word FOX has several meanings and the goods in the application were narrow and highly regulated.
LEWIS HAMILTON v HAMILTON
Lewis Hamilton’s rights management entities have registered the trade mark LEWIS HAMILTON in a number of jurisdictions, including Australia (although a search of the register confirms that the Australian trade mark registration was not renewed in 2016).
If the dispute between 44IP and Swatch Group had been conducted in Australia (assuming the LEWIS HAMILTON trade mark was still registered), is the result likely to have been different? The answer is ‘probably not’, since Hamilton International has an Australian registration for HAMILTON in relation to watches which has been registered since November 2005, whereas the LEWIS HAMILTON trade mark did not extend to watches or similar goods, and was not registered until December 2006.
Furthermore, a party having rights in two relatively generic or descriptive words such as LEWIS HAMILTON will generally not have monopoly rights over one of those words in isolation, unless of course they have also registered that single word as a trade mark.
Famous trade marks
Fame or notoriety will certainly assist under Australian law in establishing claims under sections 18 or 29 of the Australian Consumer Law for misrepresentations as to an association or for the tort of passing off. Famous trade marks or trade marks for famous people will be considered under Australian trade mark law. For example, section 43 of the Act provides that a trade mark will be rejected if likely to deceive or cause confusion. This is also a ground of opposition.
Well known trade marks can provide broader scope of protection for infringement cases in Australia. Under section 120 of the Act (which deals with trade mark infringement), subsection (3) provides that infringement may occur if well known marks are used on unrelated goods or services. From a 44IP perspective, this would mean that if they established LEWIS HAMILTON was a well known trade mark, they could have claims in relation to watches, even if their trade mark rights did not extend to watches. As noted above, in this instance however, Hamilton International had prior rights, and 44IP’s rights are for LEWIS HAMILTON and not merely HAMILTON.
As noted, the dispute before the EUIPO between 44IP and Swatch Group relating to the HAMILTON brand raises a wide number of interesting issues from a trade mark perspective. Based on our assessment of the facts, ATMO would be likely to make the same decision if confronted with the same facts as were before the EUIPO in this case.
It is likely that Lewis Hamilton’s watch sponsor encouraged, or indeed required, 44IP to oppose Swatch Group’s HAMILTON trade mark in Europe. With Hamilton International’s long history of use of the HAMILTON brand, which presumably passed to Swatch Group pursuant to a business acquisition, this was always going to be one race where Lewis Hamilton was not sitting in pole position.
Moulis Legal have acted for a range of professional sports people, professional sporting teams, sporting organisations and event organisers in securing and defending important branding rights in Australia. Our sports law team includes an Olympian (Shaun Creighton) and a Socceroo (Daniel Moulis).
This memo presents an overview and commentary of the subject matter. It is not provided in the context of a solicitor-client relationship and no duty of care is assumed or accepted. It does not constitute legal advice.
© Moulis Legal 2020