Race win for Formula 1, who prevails in nullity action

By Aguayo, Ecclefield & Martínez (AEM Law Firm)

In 2012, the National Institute of Industrial Property (Inapi) of Chile rejected a nullity action filed by Formula One Licensing B.V. against the trademark "Formula One F1", which distinguished products from Class 32 of the Nice Classification: Beers; Mineral and aerated waters and other non-alcoholic beverages; Fruit drinks and fruit juices.

The plaintiff based its claim on the fact that it owned the trademarks "Formula Uno", "Formula 1" and "Formula One" to distinguish in various countries both Class 32 products and most of the products and services of the Nice Classification, and therefore it was a public fact that those three trademarks enjoyed worldwide fame and notoriety.

The ruling in first instance rejected the nullity action because, although the plaintiff had been able to prove the fame and notoriety of its trademarks and that they were registered prior to the "Formula One F1" trademark, it had not been able to prove the prior registrations in Class 32 of the Nice Classification. The Industrial Property Court upheld the ruling in second instance.

However after a second appeal, in June 2017 the Supreme Court upheld the nullity action and consequently ordered the annulment of the "Formula One F1" trademark for Class 32 products. The ruling stated that the trademark possessed phonetic similarities to all trademarks owned by Formula One Licensing B.V., which could lead to confusion in consumers and mislead the origin of the products in such a way that it was not feasible to presume that they could peacefully coexist on the market.