Celebrity news can sometimes cause fringe but nonetheless important issues to come to the fore. This has been the case recently where Lewis Hamilton’s brushes with IP have highlighted a couple of interesting points.
A first piece of news concerned Hamilton’s brush with US patent litigation, where he had bizarrely been included as a defendant in a patent infringement case relating to the Halo™ safety system. Inventor Jens Nygaard brought this action against a number of organisations including various F1™ racing teams, and included both Hamilton and fellow F1 driver Charles Leclerk as defendants. The case against both Hamilton and Leclerk was recently dismissed by the judge following submissions that the case against them fell under the customer suit exception. This exception is designed to protect individual end users from the risks of patent infringement in the US. It probably didn’t however protect the drivers from not insignificant costs in defending their cases, costs that are unlikely to be recoverable.
In the UK, whist there is nothing to prevent end users being named as defendants in patent infringement actions, such claims will not succeed where the end use is private and for a non-commercial purpose. Moreover, employees, such as Hamilton, usually benefit from an indemnity from their employer in their contract with it, shielding them from this and other potential liability arising from the performance of their duties. Companies purchasing allegedly infringing products for inclusion in their own products may not, however, be so lucky.
An interesting side note is that Ferrari™ are looking to introduce a Halo-type safety system to their road cars, a system that is subject to Ferrari’s own patent application. One can imagine that Mr Nygaard will be looking closely at Ferrari’s proposed system.
Hamilton’s company, 44IP Limited, has also recently lost their 3 year battle with Swiss watchmaker Hamilton International AG (HI) over their respective trade marks: LEWIS HAMILTON and HAMILTON in relation to watches etc. Following HI’s opposition of 44IP’s application for LEWIS HAMILTON, 44IP applied to cancel HI’s EU registration for HAMILTON on the basis of bad faith, because the registration was filed to avoid the need to prove use of their earlier registration. The EUIPO Board of Appeal was somewhat scathing in their decision, holding that it was clear that the watchmaker had not acted in bad faith, and also making the point that even 44IP “explicitly accepted that the contested mark ‘HAMILTON’ had been used since 1892, i.e. even before the date of birth of ‘Lewis Hamilton’ as a natural person”. The fact that there was no “natural right” for a person to have his own name registered as a trade mark, when that would infringe a third parties’ rights, was also commented on by the Board. As a result of this decision, HI will likely be successful in their opposition towards the LEWIS HAMILTON application and will then have exclusive rights to use HAMILTON in respect of watches throughout the EU, leaving Hamilton trailing in the dust.