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F1 trademark row to resurface?

NEWS STORY
22/04/2014

As Bernie Ecclestone's bribery trial gets underway in Munich a previous legal issue which proved unsuccessful and highly costly for him rears its ugly head.

Despite being the head of the so-called pinnacle of motor sport, supposedly the most technologically advanced of all sports, Ecclestone is a bit of a technophobe. While most sports grabbed the opportunities of the world wide web, and all that followed, with both hands, the F1 supremo appeared to consider it a passing fad.

Slowly, largely thanks to the efforts of those around him, he is catching on to the idea that one is either part of the information-based technological revolution or one gets left behind. However, the fact is Formula One remains some way behind other sports.

At the end of the 1990s and early 2000s, Ecclestone was involved in a brutal, hard fought battle for the domain name F1.com. Businesswoman and F1 fan Nicky Morris bought the domain name and established one of the first dedicated websites and soon fans found a whole new way to connect to their sport.

Though he had barely heard of the 'interweb thingy' and had no product of his own to offer, Ecclestone fought Morris on both side of the Atlantic in his efforts to take back the domain name and along the way things got very messy.

Aware, but disbelieving, that the web might one day threaten the TV deals on which much of his F1 empire was built, the warning went out that journalists and photographers were at risk of losing their accreditation if they supplied content not only to Morris' site but any of the other young pretenders.

Much of Ecclestone's argument was based on the fact that since he owned the Formula One trademark he believed the domain name belonged to him. This at a time when Morris had taken an enormous gamble and founded a website which by this time employed half-a-dozen full time staff to provide content for the one million regular users. This at a time when the number of serious F1-related websites could be counted on one hand… with fingers to spare.

The battle raged on both sides of the Atlantic, Morris refusing to yield. But then again, why should she?

"We strongly believe that Ecclestone, the ringmaster of the sport for many years, is now using his powerful and cash-rich group of companies in a deliberate attempt to drive Formula1.com out of business," she wrote on the site.

Arguing that there were many other companies using the name 'F1' including a hotel chain and even a power boat series, she fought Ecclestone all the way.

Eventually, he gave in and as a result Morris walked into the sunset with a settlement thought to be worth around $10m and the sport finally had its own official website.

Even though he had lost the battle(s), Ecclestone had effectively won the war and for a while others who had incorporated references to 'F1' or 'formulaone' into their names were concerned that attention might shift to them. There was a certain amount of sabre rattling, a few legal letters sent out, but eventually, having enjoyed little success with the authorities the matter died down.

Until now.

We're not too sure when this page appeared on the official Formula One website - possibly when the sector times were replaced by dots - but the message concerning the sport's various trademarks is clear.

Warning that trade marks used to identify the brand including 'F1 FORMULA 1' logo, 'F1' logo, 'F1 FIA FORMULA ONE WORLD CHAMPIONSHIP' logo, 'FORMULA ONE PADDOCK CLUB' logo, F1™, FORMULA ONE™, FORMULA 1™, FIA FORMULA ONE WORLD CHAMPIONSHIP™, FORMULA ONE PADDOCK CLUB™, PADDOCK CLUB™ and GRAND PRIX™ have been registered in the UK, EU and internationally as trade marks, in connection with a wide range of goods and services, interested parties are advised that such trade marks cannot be used by third parties without a specific licence or permission.

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READERS COMMENTS

 

1. Posted by petes, 25/04/2014 5:34

"@Red Baron.... I'm surprised too. Grand Prick$ would've been more appropriate don't you think?"

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2. Posted by emcomments, 25/04/2014 0:48

"For some reason the Formula1.com legal page you linked to does not use the R in a circle symbol (for registered trade marks) but uses the TM which the Intellectual Property Office (IPO) website (http://www.ipo.gov.uk/types/tm/t-manage/t-enforce.htm) says: "The symbol 'TM' has no legal significance in the United Kingdom"

As Formula1.com says: 'FORMULA ONE MANAGEMENT LIMITED' is a company registered in England and Wales with company number 01545332. does the shotgun use of the TM symbol actually have the same significance as Chris Balfe™'s use of it above does?

The IPO page also says: "You would break the law (Section 95 of the Trade Marks Act 1994) if you use the registered symbol ® or the abbreviation "RTM", on a mark that is not registered anywhere in the world." Just a thought."

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3. Posted by West York, 24/04/2014 11:37

"I'll await Bernie and his lawyers turning up at the local hand car wash in Bradford very soon then - How long can "FOAMULA 1" survive as their trading name?"

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4. Posted by Red Baron, 23/04/2014 0:30

"I'm very surprised they were allowed to trademark the term 'Grand Prix' ...which would technically require the likes of Indycar and NASCAR to license the term from FOM. I might be wrong, but to my way of thinking the term 'Grand Prix' is a widely used description for a type of race, in the same way that 'Ballet' is used to describe a type of dance... wonder if I can trademark the word Ballet hmm..."

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5. Posted by Spindoctor, 22/04/2014 13:53

"Who's surprised?

Bernie, in association with Max pushed F1 into its current shape: a brilliant Financial Business, but a lousy Sport. Although credited with almost preternatural "instincts" and apparently a wonderful deal-maker, Bernie, without the support of Max's more clinical and analytical intellect, appears increasingly out of his depth as the 21st Century progresses.

This (the whole "tm" malarkey) is the kind of "corporatist" bullying that further undermines 'F1' (c)tm's already diminishing sporting credibility. A bit more attention focussed on the "product" and a little less on the commercial "rights" and interests of the "owners" would not go amiss....."

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6. Posted by F_Uno, 22/04/2014 12:32

"Title should of course read RESURFACE not RESUAFACE. Leaving that aside, the article has substance. Example? The great F1reader forcedly gone off the app market to return as Freader1. Silly games thanks to soul less 'yes' lawyers."

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7. Posted by ColliAle, 22/04/2014 11:44

"It's a shame when things come to this, I run a fantasy league at work. We used to use a nice fantasy website who were threatened with legal action last year. The poor guy received so much conflicting advice and could not afford legal representation he felt his only recourse was to close down the site."

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