F1 champion Hamilton spins out in trademark rights showdown

By Tony Poland, LegalMatters Staff • It is not surprising a European court slammed the brakes on Formula One legend Lewis Hamilton’s attempt to sideswipe a renowned watchmaker’s trademark application, says Toronto intellectual property lawyer John Simpson.

The seven-time F1 world champion was hoping to block the Hamilton Watch Company (HWC) from registering the name, Hamilton.

However, in a recent decision, the European Union Intellectual Property Office ruled against the race car driver saying, “There is no ‘natural right’ for a person to have his or her own name registered as a trademark when that would infringe third parties’ rights.” 

“The contested mark consists solely of one word ‘HAMILTON’, and not ‘LEWIS HAMILTON’. It is a rather common surname in English-speaking countries,” the court stated.

The legal battle went on for three years and had many people wondering why it was undertaken, including Simpson, principal of IP and new media law boutique Shift Law Professional Corporation.

‘Bit of a mystery’

“They really dug in on this. Which is surprising because there’s a real lack of merit in the case,” he tells LegalMattersCanada.ca. “It’s a bit of a mystery. Why would you do this because the law is so well established? It is not unusual for well-financed parties to pursue questionable litigation but that usually only works if you are up against someone who isn’t well-financed.”

Simpson says there are times where celebrity ego can come into play. 

“There are instances where someone will instruct his lawyers to pursue dubious claims,” he says. “Why not take a shot? Perhaps it was publicity or thinking there was a way to create new law here.”

In this case, Simpson says, Hamilton seemed to be arguing that the watchmaker shouldn’t be allowed “to register the name they have been using for decades because it’s my name and I am more famous than they are today.”

“Is the Hamilton Watch Company entitled to register Hamilton for watches, that was the question here,” he says. “If the only basis for the argument was, ‘My name is Hamilton, I am famous and I have been famous for the past 10 years.’ That’s not going to succeed.

“It doesn’t matter how famous you have become. They were using the name before you were. End of story.”

Highly regarded

While it can be argued that Hamilton as an F1 driver is more recognizable than HWC, the company was founded in 1892 and is highly regarded in its own right, Simpson says.

“The Hamilton Watch Company has been around longer than Lewis Hamilton has been alive, certainly longer than he has been a race car driver,” he says. “It is an iconic brand itself. Elvis Presley wore a Hamilton watch.”

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According to one report, Lewis Hamilton’s legal team had tried to prevent Hamilton International from registering the trademark throughout Europe, claiming the Swiss watchmaker had done so “in bad faith” and to thwart “fair competition.”

Simpson says bad faith is also a ground of opposition in Canada. 

“We don’t have a general ground of ‘thwarting fair competition’ but the gist seems to be that Lewis Hamilton was taking the position that the watch company was trying to get exclusive rights in its brand name when it knew that he was more famous and they were specifically trying to exclude him from leveraging the goodwill in his name concerning watches,” he says.

Simpson explains that watches can be associated with luxury “and obviously Lewis Hamilton wants to associate his name as much as possible with luxury.”

Build brand recognition

“Watches are included in his company’s scope of where they would like to build some brand recognition,” he says.

Simpson says some people “seem to think a name has this extra special protection and that someone is entitled to use their name as a trademark.” However, a common name, such as Hamilton, is not afforded that right.

“Robert Downey Jr. is a registered trademark in Canada. If a name has acquired distinctiveness then it can be registered,” he says. “Canadian law is very clear on this issue. A trademark cannot be registered if it is a word that is primarily, merely, the name or the surname of an individual who is living or has died within the preceding 30 years. We get that objection from the trademark office all the time.”

In the end, arguing celebrity was a losing proposition that failed to get traction, Simpson says.

“The only basis to make a claim would be if the average consumer is going to be confused that Hamilton watches are associated with Lewis Hamilton,” he says. “The court certainly wasn’t convinced of that.”