[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　Eu general court (General Court) right Racing-Live SAS with Formula One Licensing (Hereinafter referred to as "FOL" ) The dispute between the decision. FOL It is a subsidiary of the Formula One Group, Responsible for promoting FIA Formula One World Championship activities and managing the corresponding revenues. 2004 years, Racing-Live SAS To the then European Community Internal Market Coordination Bureau (OHIM, Now known as the European Union Intellectual Property Office) File an application for trademark registration, Designated control 16 class, 38 Class sum 41 Class related goods and services, The picture is as follows: (Disputed trademark application)

　　FOL References the number of items it owns "F1" A word trademark and a graphic trademark (As shown in the picture below) , Raise an objection to the above application for dispute: (Quotation mark)

　　FOL The petition was denied, The examiner thought "F1" It's a generic name for a type of racing car, Unless it appears alongside the corresponding logo, Consumers generally cannot recognize any distinguishing features. subsequently, The General Court affirmed that conclusion. FOL To the European Court of Justice (Court of Justice) appeal, And eventually overturned the first verdict (Case number: C-196/11) . The European Court of Justice held that, The first judgment of the general court violated "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 8 (1) (b) article, Because it is in the Community trademark registration procedure, right FOL Evaluate the validity of the prior country's trademark, And that assessment should apply only to revocation proceedings in the Member State in which the mark is registered. The European Court of Justice decided to send the case back to the general Court for retrial, Requiring the latter to take no account of the prior trademark "F1" Elements that lack significant distinction, Re-examine the applicability of the dispute "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 8 (1) (b) article? (The first 8 (1) (b) article: The following situation occurs, The prior trademark owner shall have the right to object to the application for trademark registration: The use of the same or similar mark as the prior trademark on the same or similar goods and services, Which may lead to the risk of confusion and misidentification by the relevant public in the field of the prior trademark; Risk of confusion and misidentification here, Including the mistaken association with the prior trademark. ——Translator's note)

　　 [conclusion]

　　The general court hears the case and resends it, although OHIM (And the court) It is possible to examine the significant distinction of prior reference in trademark objection proceedings, However, it should not be concluded from this assessment that there is a lack of significant distinction between marks that are identical with previously registered and protected national trademarks, Because this does not correspond to the fact that national and Community trademarks of the Member States coexist, Do not conform to "Community trade marks Ordinance (The first (EC) 207/2009 No) " The first 8 (1) (b) Provision of article.

　　On this basis, The general court compares the disputed mark with the quoted mark. Despite the passing form, The sound, Pasta comparison, The court's decision "F1" The role of elements in disputed trademarks remains questionable, But it still acknowledges that whereas the quoted mark and the disputed mark both contain "F1" element, As a result, they are somewhat similar. The court also noted, The other two elements that make up the controversial logo (word "LIVE" And graphic elements) It is reminiscent of activities associated with motor sports, with "F1" When elements appear side by side, Would make the general public think the controversial logo is associated with Formula One racing (Formula 1) Be related to. The general court thus decided: "Because the two trademarks contain exactly the same elements 'F1' , Consumers may mistake the latter for a variant of the prior trademark, Commercial origin, And that's why they're linked" .

　　To sum up, The General Court ultimately upheld it FOL claim, The application for trademark registration in dispute shall be rejected.

　　 [comment]

　　The general Court's decision in this dispute was correct, Because it confirms that the European patent at No C-196/11 The principles established in the judgment: (1) In the Community trademark registration procedure, The validity of the trademark in the prior country cannot be questioned; (2) In principle, It should be considered that the trademark of the prior country on which the application for a Community trademark objection is based has certain distinctiveness.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights