F1's appeal against F1H2O trademark dismissed

F1 mark not exclusively linked with motor race before powerboat's application: Judge

The F1 night race and F1H2O powerboat race brand names can co-exist after the High Court dismissed F1's appeal against the powerboat's trademark application.

Justice Tay Yong Kwang acknowledged that the plain F1 mark had become distinctive of Formula One here since the $150 million night races started in 2008, but the F1H2O trademark application predated it by a year.

At issue was whether, before 2008, the F1 mark was linked distinctively to motor racing here or whether it was a descriptive term applied to other sports as well.

"When the term F1 was first applied to the respondent's powerboat racing championships in Singapore, it preceded the appellant's night races here by 18 years," said Justice Tay in judgment grounds issued on Tuesday.

He found that the plain F1 mark was not linked exclusively with the motor race before the powerboat racing promoter's application date in January 2007.

The appeal before Justice Tay marked the second standoff in a longstanding trademark clash between the two crowd-pulling titans after the motor race owner lost the first round in 2013 and its additional arguments were rejected in April by Assistant Registrar of Trade Marks Diyanah Baharudin.

Formula One Licensing BV (FOL), the trademark managers for the FIA Formula One World Championship, the premier motor-racing event, had objected when Swiss-based Idea Marketing SA applied to register its F1H2O trademark here in 2007.

Idea Marketing is the global promoter for the F1 Powerboat World Championship, a high-octane water sport event hosted at different venues since 1993.

It sought to register its brand name for products like sunglasses, clothing and footwear, as well as when organising sports competitions and online games.

Gateway Law Corporation lawyer Raymund Anthony argued that FOL had three trademarks registered in 1997, and urged the court to relook its evidence submitted earlier.

But the court noted the plain "F1" mark was registered five months after Idea made its application in 2007.

Drew & Napier lawyer Dedar Singh countered that the plain F1 mark is descriptive and can become distinctive as a trademark only through use, which occurred after 2008 but not in 2007.

He added that if FOL regarded the plain F1 mark as its trademark, it would have included the item along with its other marks registered in 1997, which are Formula One, Formula 1 and Formula 1 World Championship.

Justice Tay ruled that before 2007, "F1 was used to a standard by which vehicles - whether motorcars or powerboats - were categorised, and the media had not associated F1 exclusively with (motor racing)".

The court stressed that its findings were based on the evidence before the 2007 date, when Idea applied for registration.

In the years since night races began, "it could perhaps be said that the plain F1 mark has become distinctive of (FOL) in Singapore... especially since the respondent's last powerboating championship was held here in 2011".

Both parties have engaged in a worldwide multi-jurisdictional battle over the F1H2O trademark that includes Japan, Switzerland and the European community.

A version of this article appeared in the print edition of The Straits Times on October 16, 2015, with the headline 'F1's appeal against F1H2O trademark dismissed'. Print Edition | Subscribe