What’s in a (Sur)name?

The failure of Lewis Hamilton's three-year case against Hamilton International AG illustrates several interesting facets of IP law and what it means for "common" names.

Claire Lehr, Partner at EIP, examines the F1 racer’s legal battle and what it demonstrates about IP law in Europe.

It was announced last month that Lewis Hamilton had lost his three-year trademark battle with Hamilton International AG, the Swiss watchmakers. The Formula One driver’s intellectual property firm 44IP Limited had claimed that Hamilton International registered the name HAMILTON in bad faith and to prevent competition. These claims were dismissed by the Board of Appeal at the EUIPO, which concluded Lewis Hamilton had no “natural right” to protect his “common” surname. The case raised a number of interesting points.

The HAMILTON case contrasts with Lionel Messi’s nine-year trademark battle for his surname, MESSI. Unlike in the Hamilton case, the European Court of Justice held Messi could register his surname for, inter alia, sportswear. This upheld a 2018 decision by the General Court, which ruled that Messi’s reputation as “a well-known public figure who can be seen on television and who is regularly discussed on television or on the radio”.

There is no doubt that Lewis Hamilton also falls in to the “well-known public figure” category. But generally, the footballer is referred to as Messi, not Lionel Messi, whereas the racing driver is better known by his full name, Lewis Hamilton, not Hamilton.

Would it have made a difference in the present case? It’s possible, but unlikely, since crucial to the case was that Hamilton International had been using the mark HAMILTON on watches since 1892, decades before the birth of the racing driver, which was pointed out by its legal team.

Hamilton International opposed the EU trade mark application for LEWIS HAMILTON filed by 44IP in Classes 14 and 35. As part of an ill-fated strategy to obtain leverage and overcome the opposition, 44IP filed invalidation proceedings in 2018 against Hamilton International’s earlier EU right for HAMILTON, claiming, amongst other things, that the mark had been filed in bad faith. This was dismissed at first instance and upheld by the Board of Appeal, which noted that the bad faith claim had “no factual basis from the outset”.

The Board of Appeal also commented that Hamilton International’s expansion into other categories was “legitimate and completely within normal marketing strategy” for a portfolio to be updated. The strategy had been questioned by 44IP. The Board of Appeal pointed out it was not up to third parties to comment on others’ marketing strategies.

In terms of next steps, it is open to 44IP to appeal the decision at the General Court. But is it likely to do so? It would seem unlikely. The Board of Appeal has held that Lewis Hamilton’s surname is not instantly recognisable, stating that it is “rather common surname” in English speaking territories and that no individual has a “natural right” to have their name registered if it infringes others’ rights. If 44IP wants to brand goods in Class 14 with LEWIS HAMILTON, it may want to consider the Class 14 goods from a 2006 (expired) registration for LEWIS HAMILTON, being “ornamental motor vehicles and safety helmets made from precious metals and their alloys or coated therewith” – a specification “on track” with Formula One.

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