This book includes a plain text version that is designed for high accessibility. To use this version please follow this link.
SEPTEMBER 2014


Le Circuit de Spa Francorchamps (Spa) filed a trademark application for L’EAU ROUGE to cover vehicles, in the European Community, on 9 December 2013. Unlike requirements under US trademark law, there is no need to declare an intention to use a trademark when you apply for a registration in the European Community. This trademark was registered in April, and did not meet with any opposition from third parties.


for L’EAU ROUGE covering identical goods, were Nissan to try to launch cars branded EAU ROUGE in the EU. Alternatively, it opens the door for the parties to reach a lucrative deal whereby Nissan pay Spa for using the name on cars in the EU. Whether there can be co-existence between the companies will mostly depend on the attitudes of both parties, but it is likely that an agreement will be reached, if an agreement has not already been concluded.


EIP


likely to believe that cars branded EAU ROUGE were in fact produced by Spa. Spa may claim that the mark L’EAU ROUGE is well-known internationally but unless they have used the mark on automobiles they will struggle to substantiate such an argument.


Despite their European rights, and the fame of the racing track, Spa could struggle to prevent Nissan from registering the trademark on cars in the US.





Spa already had trademark registrations for the mark L’EAU ROUGE covering products relating to merchandise for the racing track, such as clothing, watches and jewellery, as well as restaurant and bar services.


It can be no coincidence that Spa filed their latest Community Trade Mark merely seven days after Nissan sought trademark rights in Japan. Their Community Trade Mark registration for vehicles was very likely to have been a strategic move by Spa to prevent Nissan from entering the EU market, or to make it difficult for them to market their Q50 Eau Rouge car, named after the famous corner of the Spa-Francorchamps circuit, without first seeking consent from the owners of the circuit.


The presence of this registration means that Spa could file an action for trademark infringement, based on their registration


What we are seeing here is an attempt by two companies to carve up the worldwide market for vehicles branded EAU ROUGE and/or L’EAU ROUGE. Trademark registrations are geographically limited; they are territorial rights. Owning or using a trademark in one country does not necessarily give you the right to prevent another company from adopting the brand in another territory or indeed on other products.


Currently, Nissan have Japan and they are on their way to a US registration as well. Spa have the European trademark registration. Despite their European rights, and the fame of the racing track, Spa could struggle to prevent Nissan from registering the trademark on cars in the US. Spa would have to convince the USPTO that they have trademark rights to the mark L’EAU ROUGE that extend across the pond, and that US consumers are


Nissan’s trademark applications are a smart and perhaps cheeky attempt to allude to the speed and skill required to navigate the famous Formula One circuit, but Spa will have few grounds to prevent them from using the mark on cars outside the Europe. However, Spa’s trademark will stand in the way of any attempts by Nissan to market or sell the car within Europe unless they can negotiate an agreement with the owners of the circuit.


We may find that Spa is content with rights to the mark L’EAU ROUGE in the European Community only. Spa did not attempt to prevent Nissan from registering the mark in Japan and we will find out within the next few months whether they regard Nissan’s trademark application as a problem in the USA.


In the meantime, practitioners should note the value of a worldwide trademark watching service and keeping up to date on third party applications to register their clients’ most valued brands. Had Nissan applied to register EAU ROUGE as a Community Trade Mark prior to Spa’s application, Spa may have found themselves igniting an expensive and drawn-out battle to reclaim the trademark. LM


Sharon Daboul is a registered UK and European trademark attorney at EIP in London. You can reach her on +44 (0)20 7440 9510 or sdaboul@eip.com


www.lawyer-monthly.com


23





Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60  |  Page 61  |  Page 62  |  Page 63  |  Page 64  |  Page 65  |  Page 66  |  Page 67  |  Page 68  |  Page 69  |  Page 70  |  Page 71  |  Page 72  |  Page 73  |  Page 74  |  Page 75  |  Page 76  |  Page 77  |  Page 78