30 May 2019

Two horns locked! The IPEC Rules against Formula1 Sponsor

Judge Melissa Clarke of The Intellectual Property Enterprise Court, the UK’s specialist IP Court, recently handed down a judgement agreeing with British bicycle company, Whyte Bikes, that its copyright infringement dispute with Rich Energy, the current title sponsor of the Haas Formula 1 team, is valid.

Judge Melissa Clarke of The Intellectual Property Enterprise Court, the UK’s specialist IP Court, recently handed down a judgement agreeing with British bicycle company, Whyte Bikes, that its copyright infringement dispute with Rich Energy, the current title sponsor of the Haas Formula 1 team, is valid.

In 2008 two employees of Whyte Bikes created a logo depicting a stag’s head which has been used by Whyte Bikes ever since.

In 2015, Rich Energy, a UK-based energy drinks company, commissioned Staxoweb, a digital marketing company, to design a new brand identity. The logo was registered as a UK trade mark under number 3126288 in December 2015, for goods in Classes 5, 25, and 32 to include energy drinks and non-alcoholic cocktails.

The stag image is used on the Haas Formula1 Team race cars with Rich Energy being the sponsor. The stag image is also depicted on Rich Energy’s website and its beverage products.

ATB Sales, Whyte Bikes’ parent company, filed a copyright infringement complaint against Rich Energy, William Storey its CEO and Staxoweb, claiming the level of similarity between its own logo and Rich Energy’s logo was overwhelming.

Whyte Bikes asked the IPEC to award injunctive relief, and to invalidate the trade mark. In response, the defendants claimed their logo was designed independently and without reference to, or knowledge of, Whyte Bikes’ logo.

Judge Clarke said she found some significant dishonesty in the defendants’ case. Including that Sean Kelly, of Staxoweb, manufactured documentation supporting the defendants case, by producing parts of Rich Energy's brand guidelines in 2018 but claiming they had been created in 2015. As a result, “the question of the honesty of the defendants’ beliefs remains a question to be determined by the court.”

Her honour noted the defendants had looked at hundreds of stag head logos online for inspiration and, as a result, it is more likely than not they had seen Whyte Bikes’ logo.

After comparing the two logos, the Judge described them as strikingly similar and more likely to be the result of copying than coincidence.

The judge concluded Whyte Bikes’ logo was knowingly copied by Staxoweb. The judgement is that Rich Energy’s logo infringes the copyright in the Whyte logo, entitling ATB to injunctive relief and damages or an account of Rich Energy’s profits. The trade mark is, therefore, deemed invalid under UK copyright law.

There is a lesson to be learned here; register your brand as a trade mark before somebody else does!

Need advice concerning your Trade Mark portfolio or protecting your brands?

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