EU 25 Jan 2021
The time of a three-year old dispute has now come to an end. The company Hamilton International, the luxury watch maker, won the dispute for the word mark “Hamilton”. They had filed a new EU trademark application in order to obtain the exclusivity of the name used by the manufacturer for its luxury watches. Formula One champion and entrepreneur Lewis Hamilton wanted to prevent the name “Hamilton” from being used and filed an application for a declaration of invalidity. The EU Intellectual Property Office EUIPO ruled in favour of the watch maker and the appeal was dismissed according to EUIPO, in October 2020.
The Formula One world champion Sir Lewis Hamilton has, through his company 44IP Limited, named after his racing number when competing for Mercedes, filed a cancellation request – with the purpose to cancel the Swiss watch maker Hamilton’s new EU trademark application. 44IP wanted to prevent them from using the name, which happens to be champion Lewis’ surname, on their watches. Lewis’ representative argued that the new application sought to extend the grace period in order to avoid the obligation to use its previously registered trademark, thus submitting the application in bad faith. Also, obstruction of fair competition and the free movement of goods was raised by the 44IP representative, as well as the expression of their concerns about that the rival company has not shown their true commercial intentions to expand on the market within new product categories, such as smartwatches.
The manufacturer of luxury watches Hamilton International AG, owned by Swatch Group, replied that the new trademark application was not made in bad faith, and that the trademark has been used for the past five years. Hamilton registered its word mark in 2015 “Hamilton” in two classes, one of which, class 14, has since been changed with a new wording. Therefore, the previously registered EU trademark did not cover additional products, mostly as a result of the technological development in the horological field. Hamilton was established as early as 1892 and has since then made wrist watches bearing the name “Hamilton”, i.e more than 100 years.
The trademark dispute has been going on for about three years with arguments and submission of evidence and the decision of the appeal proceedings came in October 2020. EUIPO ruled in favour to Hamilton as they had a genuine intention with their application and use of its trademark. The reasoning being, among others, that there is no obligation to disclose their marketing strategies. Nor the fact that the contested mark consists merely of the element “Hamilton” that happens to be the surname of Lewis Hamilton. They considered 44IP’s cancellation request to be unfounded, as he has no natural right to the name, and therefore dismissed the appeal in its entirety. The watch maker Hamilton’s trademark application is thus valid. When 44IP Limited lost the dispute, they are to pay the representative costs to Hamilton International of Euro 1000.