Section 3(1)(d) of the Trade Marks Act 1994 (the Act) states:

3. - (1) The following shall not be registered –

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

In a 2007 case the registerability of F1 in class 41 was dicussed by a Hearing Officer, on the basis of an opposition.  The application was by the owners of the name Formula One, Formula One Licensing BV (FOL). 

As is typical the mark allegedly contrary to s3(1)(d) was also opposed on the grounds that it was not distinctive, therefore contrary to s3(1)(b).  Furthermore it was opposed as contrary to s3(1)(c) as F1 describes services characteristic to formula one racing.

Finally the mark was indeed contrary to s3(1)(d) as it serves in the current language and bona fide and established practices of the trade.

FOL provided evidence of use and ownership, to show acquired distinctiveness and applied this to all of s3(1).  In relation to s3(1)(b) FOL submitted that although it is an abbreviation it has acquired distinctiveness.  FOL also submitted that tight control and regulation denied that the mark was characteristic of the services so s3(1)(c) was not relevant

FOL denied that F1 is used in current language, so s3(1)(d) was not applicable, stating that the way it is used highlights the function as an indicator of trade origin.

Trademarkroom