'F1' and 'F1H20' can co-exist

The F1 night race and the F1H2O powerboat race brand names can continue alongside each other, ruled a registrar in settling a longstanding trademark clash between the two crowd-pulling titans.

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.

FOL sought to rely on the fame of its F1 mark. However, this was rejected by Assistant Registrar of Trade Marks Diyanah Baharudin, who found the evidence produced did not meet the standard expected of a well-known name,

Her decision comes as the name F1 has been associated with a series of night races for motor racing held in the Republic for the past six years since 2008.

AR Diyanah found the "F1" term to be a descriptive one and not distinctive of any particular event.

Her decision grounds released on Friday cited, among other things, a 2004 Straits Times article titled "F1 v F1" comparing an F1 car to an F1 powerboat which showed the term was "equally used in the context of both sports".

FOL also argued that its trademarks, F1, Formula 1 or One, and F1 Singapore Grand Prix, pre-dated the F1H2O trademark, as they were submitted before.

At issue was whether the earlier trademark, if incorporated in the competitor's product, would lead to confusion since the goods involved are similar.

But Drew & Napier lawyer Ngoi Soon Hui argued for F1H2O that there was no reason the "F1" would be the essential and dominant element, as the numbers and letters are of equal size and prominence in F1H2O unlike the F1 in the opposing trademarks.

She added that "H2O" was a distinctive element, and "just because the registered mark was wholly included in the challenged sign, it did not mean that it would necessarily cause confusion between the two".

AR Diyanah ruled the inquiry had to be seen from the perspective of the "average consumer who would exercise some care and a measure of good sense".

She found that the F1H20 mark was not visually or conceptually similar to the three F1 signs that pre-dated the former's 2007 application.

AR Diyanah further noted that although the plain F1 mark was registered in May 2007 and night races were held from 2008 to 2011, no evidence was given of any confusion arising from the use of F1H2O during the most recent powerboating event in Singapore in 2011 - called the F1H2O World Championship.

"I am therefore of the view that any adverse effect on the opponents' business that may be caused by the registration of the application mark is likely to be overstated."

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


Get a copy of The Straits Times or go to straitstimes.com for more stories.