Trademark Infringement

[NR89]

Hi everyone,

Looking for some advice... I just trademarked a name I have been using in the content creation world. I received an email from the giants themselves Formula One Media stating similarities in my name and theirs.
My content creation name and website is Formula Hun, I have been using it for a couple of years now on streaming websites, social media & my website.
They have asked me to withdraw the trademark, change my logo which is FH with a similar font, I have taken that down and removed it from all socials and website. And not use my website in a commercial way.

I got advice before making the trademark and was told due to it being just the word Formula & that is not trademarked, it would be fine. They are also not trademarked 'Formula One' in the same class as me, I'm trademarked in Class 41 which they are not. They have also stated that they own ANY content which has F1 related content...

My point with them is that I am not impersonating them, though I do talk about F1, I also do gaming. I am my own brand, which is simply talking about Motorsport & Gaming.

I obviously don't want to end up in court, I cannot afford what they can. But I'm gutted. I have been known as that name for years, I have even worked with F1 Esports, now it's a problem. I don't feel that the name is a problem, nor would it cause confusion or damage to their brand. I am representing women in the world of Motorsport and Gaming, the name is simply a play on words.

I have asked for more time to seek legal advice but I really don't know where to go from here...

Any advice would be greatly appreciated.

 

[Hughj11]

Hey, sorry to hear you're going through this!

There are a few things to break down here.

Is the trade mark registered or have you just applied and in the opposition phase?

Firstly, you do not have to intend to or actually impersonate them. That is not the measure for infringement. The measure is whether or not the relevant public would draw any conclusion that you are affiliated with, or otherwise associated with a previous mark. They will also take into account the likelihood of confusion, which will consider how similar the marks are (aurally, visually, conceptually).

There is also the principle of reputation to consider. If a trade mark has a reputation, then they are afforded a lot more protection in regards to their trade marks and common law rights. Formula One almost certainly has a reputation. The result of which means that even though the classes may be different, they would still have some protection, this is further enhanced by the idea that the more similar a trade mark is to another, the less importance is placed on the difference in classes.

Whoever gave you the trade mark advice maybe did not consider that a trade mark is taken as a whole, whilst 'Formula' may not be a registered trade mark, 'Formula One' is and simply adding a word onto the end (or before) is not sufficient for a credible difference. Take 'Easy Jet' for example, who strongly enforce their trade marks against any mark consisting of 'Easy' as a prefix.

I can't give you legal advice here, you can message me for that if you want. But perhaps a general idea would be to explore the possibilities of a co-existence agreement, seeing as you have worked with F1 Esports.

 

[The Byre]

I looked at your website and videos - all of which is still there and still using their logo-derivative.

You are using a derivative of their logo (which is also registered) you are using their images and the images of their contracted drivers on your website and YT channel and you are discussing things to do with F1. Other businesses pay millions to use these things.

You are producing a TV programme about F1 and they produce TV programmes all about F1. You are therefore without doubt trading in their space. The claim that you are not earning from the site or the videos (they both carry advertising!) is irrelevant.

This issue is also partially about case law around puns on existing trademarks - for example, Beyoncé Knowles-Carter and BGK Trademark Holdings v. Feyonce, Inc., a clothing company marketing its FEYONCE-branded merchandise. That was in New York and not in England, but the TM laws in the US and the UK and extremely similar and in matters of IP, the two legal systems do take each other into account and pay attention to what goes on elsewhere.

That case was a close-run affair and the defendant was not using the same logo and was not discussing Beyoncé Knowles-Carter or her songs or merchandise. The court found that there was no chance of confusion between the Beyoncé and FEYONCE brands.

You, on the other hand, are discussing all things to do with F1 and are using material taken either from them or from their licensees such as racetrack layouts and other images and information.

Given all of the above, it was rather nice of them to merely ask you to withdraw your TM application and stop using their material.

 

[NR89]

"I looked at your website and videos - all of which is still there and still using their logo-derivative." The logo was removed yesterday.

"You are using a derivative of their logo (which is also registered) you are using their images and the images of their contracted drivers on your website and YT channel and you are discussing things to do with F1. Other businesses pay millions to use these things."
That is incorrect, the images are there and given to be used by the public and news reporting ETC. These are for media which I am registered to do. I am also registered with F1 teams to use their images for media use.

"You are producing a TV programme about F1 and they produce TV programmes all about F1. You are therefore without doubt trading in their space. The claim that you are not earning from the site or the videos (they both carry advertising!) is irrelevant."
I am not making at TV Program, it is not shown on TV, it is used for social media IE Youtube.
There is not advertising on my YT. This is also not an issue as F1 allows fans to create content about F1, there is 1,000's of people who create content on F1, which you can find easily.

"You, on the other hand, are discussing all things to do with F1 and are using material taken either from them or from their licensees such as racetrack layouts and other images and information."
This again is information for media or fans, this information is allowed to be used.

 

[NR89]

Hey, sorry to hear you're going through this!

There are a few things to break down here.

Is the trade mark registered or have you just applied and in the opposition phase?

Firstly, you do not have to intend to or actually impersonate them. That is not the measure for infringement. The measure is whether or not the relevant public would draw any conclusion that you are affiliated with, or otherwise associated with a previous mark. They will also take into account the likelihood of confusion, which will consider how similar the marks are (aurally, visually, conceptually).

There is also the principle of reputation to consider. If a trade mark has a reputation, then they are afforded a lot more protection in regards to their trade marks and common law rights. Formula One almost certainly has a reputation. The result of which means that even though the classes may be different, they would still have some protection, this is further enhanced by the idea that the more similar a trade mark is to another, the less importance is placed on the difference in classes.

Whoever gave you the trade mark advice maybe did not consider that a trade mark is taken as a whole, whilst 'Formula' may not be a registered trade mark, 'Formula One' is and simply adding a word onto the end (or before) is not sufficient for a credible difference. Take 'Easy Jet' for example, who strongly enforce their trade marks against any mark consisting of 'Easy' as a prefix.

I can't give you legal advice here, you can message me for that if you want. But perhaps a general idea would be to explore the possibilities of a co-existence agreement, seeing as you have worked with F1 Esports.

Thank you for your helpful response!
I did apply for the Trademark and was probably not given the correct advice, which I have contacted the legal advice team I spoke to so await their response.

For the moment I guess I will remove the trademark and look at other-ways to create the content I love without upsetting FOM.

I will have a good think though. Thank you for your help.

 

[Hughj11]

Thank you for your helpful response!
I did apply for the Trademark and was probably not given the correct advice, which I have contacted the legal advice team I spoke to so await their response.

For the moment I guess I will remove the trademark and look at other-ways to create the content I love without upsetting FOM.

I will have a good think though. Thank you for your help.

Happy to help! If you have any other questions feel free to message me!

 

[The Byre]

The logo was removed yesterday.

I looked at it and your website today.

This again is information for media or fans, this information is allowed to be used.

No, it is not, unless allowance is specifically stated in such things as an online media pack. The media may report on F1 as it is of public interest, but the commercial exploitation of someone else's trademarked logo (your F in the FH logo) is almost certainly going too far. If you do have written permission to use their logo and other images, that is then fine.

A YT video is a TV programme and there is advertising both on YT and on your website. Commercial exploitation is not defined by receiving money but includes use, sale, marketing, advertising, transfer, broadcasting and duplication.

F1 is a huge company and part of the Liberty Group (total assets $44bn). Given that you are probably skating beyond the edge on this issue, I would hardly recommend that you provoke litigation! My 30 cents worth is to withdraw the application and find something else to call your TV YT channel.

I know this and all the above is not what you wanted to hear and I am sorry for that - but it is what you need to hear.

 

[DontAsk]

Looking for some advice... I just trademarked a name.

Well done, so no one objected to your application?

I did apply for the Trademark

...

I will remove the trademark

You seem to be confused between having a trademark and having applied for one.