F1 on collision course with 3M over new logo (2nd Update)

3M says F1 hijacked their logo
3M says F1 hijacked their logo

UPDATE Formula 1 is on track for a legal battle this month "which could force it to give the red light to its new logo," according to Christian Sylt for the London INDEPENDENT.

F1 changed its logo for the first time in 23 years at last year’s Abu Dhabi Grand Prix in November. The "driving force behind it" was F1 owner Liberty Media.

The previous logo "cleverly created the silhouette" of a number one between a slanted letter "F" and the "speed lines opposite it."

In contrast, "the new one is much simpler and is formed from a curved stripe with a white line running through the middle followed by a straight line."

It has "raced into a storm as it bears a striking resemblance" to one which has been registered by 3M, the stationery brand which makes Scotch tape and Post-it Notes. On May 22, 3M "lodged opposition to F1’s trademark application" and a letter sent to Liberty Media by the European Intellectual Property Office (EUIPO) revealed that it "has been accepted in principle due to its previous registration."

3M "has used its logo for the past year on a range of therapeutic clothing."

EUIPO records show that 3M registered a pan-European trademark to its logo in June last year, "which gives it precedence" as F1 did not even apply for its new logo until November.

F1’s application covers clothing but excludes therapeutic clothing, "which 3M’s mark is registered in."

However, this separation does not "guarantee F1 protection because the logos appear to be so similar, as are some of the products they are used on" INDEPENDENT

06/14/18 Unveiled by the sport's new owners at last year's Abu Dhabi Grand Prix as they sought to put further distance between F1 under its new management and the old regime under Bernie Ecclestone, the new logo was intended to "provide a fresh energy for the sport", according to Chase Carey.

However, just two months later it emerged that the new logo bore a striking resemblance to that being used by manufacturing conglomerate 3M on its Futuro range of therapeutic clothing which includes ankle supports, knee straps and compression tights.

Earlier this week it was revealed that F1 and 3M appear to be on a collision course as the conglomerate filed its opposition to the sport's application for a trademark to its own logo.

While F1 applied for a trademark to its logo in November last year, just weeks before its unveiling, 3M did that for its version nine months earlier and registered it in June 2017.

According to the European Union Intellectual Property Office (EUIPO) the owner of a registered trademark "is entitled to prevent all third parties that do not have his or her consent from using the same or similar signs for identical or related goods and/or services", and it is EUIPO that confirms that 3M registered its logo first.

Formula One's application covers 26 of the 45 categories for which words can be registered in. Those 26 include one for clothing but exclude the one relating to therapeutic clothing for which 3M's mark is registered. However, though the categories are different, this doesn't guarantee F1 protection because the products that the logos are being used on are similar.

In 2008 the European Court of Justice ruled that trademarks are "protected by a basic rule which prevents the registration or use of a sign identical or similar to a registered trademark, for goods or services identical or similar to those for which the mark is registered."

In other words, if an application is made for a logo similar to one which has already been registered it cannot be used on similar products. Now, not only do the two logos look similar, both are to be used on clothing, even if one is leisurewear and the other therapeutic.

Writing in Creative Review earlier this year, Michael Johnson, founder of branding agency Johnson Banks, described the 2008 ruling as "the killer precedent around which 3M's lawyers will be circling their wagons, since both parties wish to sell clothing, and the marks are uncannily similar".

Crucially, 3M's filing isn't restricted to F1's use of its logo on clothing, but (as shown right) "all the goods and services" because "there exists a likelihood of confusion on the part of the public."

In other words, if the EUIPO rules in 3M's favor, F1 would be banned from registering its logo in all of the categories it has applied for including clothing, video games, tickets, sports events and streaming or television coverage of them.

According to Forbes, a decision from the EUIPO usually takes between two to four months and if it upholds the opposition F1 could still appeal. If that failed 3M could then bring trade mark infringement or passing off proceedings if F1 continued to use the logo.

06/14/18 Formula One was racing into a storm tonight as an article in the Daily Telegraph by Christian Sylt revealed that Post-It Note maker 3M has officially filed opposition to the sport's application for a trademark to its own logo. It could put the brakes on the brand which has been derided by drivers and fans alike.

F1's logo was unveiled at the Abu Dhabi Grand Prix in November and was trumpeted as a flagship for F1's new era under Liberty Media which bought the sport at the start of last year. It has since been followed up with an official font, mascot and theme tune in a bid to rev up F1's image.

The previous logo had been used for 23 years and created the silhouette of a number one between a slanted letter ‘F' and the speed lines opposite. In contrast, the new logo is formed of two parts – a curved stripe with a white line running through the middle followed by a straight line. Unfortunately, it bears a striking resemblance to a logo which has been used by 3M for the past year on its Futuro range of therapeutic clothing including ankle supports, knee straps and compression tights used to prevent deep-vein thrombosis.

This put it on track for a collision with F1 as the sport launched a new line of clothing earlier this year featuring its new logo.

In January the Telegraph revealed that 3M hadn't given F1 permission to use the design and was considering what action to take. That decision has now been made as it has lodged opposition to F1's logo application with the European Intellectual Property Office (EUIPO) which will make a decision in the next two to four months.

Opposition to trademarks is not uncommon but this is different for several reasons. Firstly, the two logos look so similar and this is the key factor in whether the authorities will give F1's logo the green light.

F1's trademark application covers 26 of the total of 45 categories including one for clothing but excluding the one relating to therapeutic clothing which 3M's mark is registered in. However, in 2008 the European Court of Justice's Advocate General ruled that trademarks are "protected by a basic rule which prevents the registration or use of a sign identical or similar to a registered trademark, for goods or services identical or similar to those for which the mark is registered."

It means that if someone – such as F1 – wants to apply for a trademark to a logo which looks similar to one which has already been registered it won't be able to do so if. This is the second difference to many other opposition cases as the chronology is clear cut.

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