Formula One Licensing BV v Idea Marketing SA

Tay Yong Kwang J:

[1] Formula One Licensing B.V. (“the appellant”) manages the trade marks for the FIA Formula One World Championship. In 1997, the Federation Internationale de l'Automobile (“FIA”) granted the appellant’s group of companies the right to organise and commercially exploit the championship.

[2] Idea Marketing S.A. (“the respondent”) has been the global promoter for the F1 Powerboat World Championship, a high-octane powerboat racing event, since 1993. The F1 Powerboat Championship started globally in 1981 and is among the water sport competitions administered by the sporting body Union Internationale Monoautique (“UIM”).

[3] On 28 March 2007, the respondent applied to register “F1H20” (“the application mark”) in Singapore for goods and services in these classes:

[4] The priority date was 11 January 2007 (“the relevant date”). On 21 August 2009, “F1H20” was accepted and published for opposition purposes. The appellant then commenced opposition proceedings to stop the registration. The appellant relied on various sections in the Trade Marks Act (Cap 332, 2005 Rev Ed) (“the TMA”): ss 8(2)(b), 8(4)(b)(i), 8(4)(b)(ii), 8(7)(a) and 7(6).

[5] The Assistant Registrar of Trade Marks (“the AR”) heard the parties on 30 September 2013. In her grounds of decision dated 19 November 2013 (In the Matter of a Trade Mark Application by Idea Marketing S.A. and Opposition thereto by Formula One Licensing B.V. [2013] SGIPOS 8) (“the 2013 GD”), she held that the opposition failed on all grounds and that the application mark should proceed to registration.

[6] The appellant appealed to the High Court in TA 22. In Summons No 2188 of 2014, the appellant applied for leave to adduce further evidence. I heard the summons and made the following orders dated 22 September 2014:

[7] TA 22 remained pending while the matter was remitted to the Trade Marks Registry for a rehearing before the same AR with the further evidence on 20 January 2015. She maintained her decision, which was elaborated on in her grounds of decision dated 15 April 2015 (Formula One Licensing B.V. v Idea Marketing S.A. [2015] SGIPOS 7) (“the 2015 GD”).

[8] On 16 July 2015, I heard TA 22 as an appeal against both the 2013 GD and the 2015 GD.

[9] In the 2013 GD, the AR found that:

(a) Evidence after 11 January 2007 was irrelevant as the issue was whether the application mark should proceed to registration as at the date it was deemed to have been applied for, at 2013 GD at [8].

(b) The appellant’s (ie, the opponent before her) marks that were “earlier trade marks” under s 2(1)(a) of the TMA were its three marks that were registered before 11 January 2007, at 2013 GD at [46].

(c) The appellant’s marks, specifically the unregistered plain F1 mark, were not well known in Singapore as at 11 January 2007. So the plain F1 mark did not qualify as an earlier trade mark under s 2(1)(b) of the TMA, at 2013 GD at [47]–[48], and [76].

(d) The plain F1 mark was descriptive of a particular class or standard of sport in both motor racing and powerboat racing. She should be cautious in granting a descriptive mark protection as a well known mark, at 2013 GD at [59]–[60].

(e) The opposition under s 8(2)(b) of the TMA failed as the appellant’s earlier marks – the three registered marks – were not similar to the application mark, at 2013 GD at [91].

(f) The opposition under s 8(4)(b) of the TMA failed as the appellant’s marks were not well known in Singapore under s 8(4)(a), at 2013 GD at [93].

(g) The opposition under s 8(7) of the TMA failed as the appellant had not established the requisite goodwill in the tort of passing off, 2013 GD at [107].

(h) The opposition under s 7(6) of the TMA failed as the appellant had failed to prove bad faith, 2013 GD at [120].

[10] In the 2015 GD, the AR found that:

(a) Distinctiveness, whether inherent or acquired, played an important role in determining if the plain F1 mark could be considered a trade mark. To qualify as a trade mark, the plain F1 mark must be capable of distinguishing goods or services (see definition of “trade mark” in s 2 of the TMA), ie, the plain F1 mark must be capable of distinguishing the appellant’s motor races, at 2015 GD at [27].

(b) The further evidence showed that there were at least two possible undertakings – the appellant’s motor race and the respondent’s powerboating event – that the relevant sector of the public would associate with the plain F1 mark and therefore, it was not distinctive of the appellant alone, 2015 GD at [69].

(c) In view of the evidence, the plain F1 mark was unable to perform the basic function of distinguishing the appellant’s goods or services from those of its competitors. It was therefore not in the public interest to allow the appellant to register and obtain a monopoly on words and phrases which other traders might wish to use for their goods and services, 2015 GD at [72].

(d) The plain F1 mark was not distinctive of the appellant’s goods and/or services alone. There was also evidence that it simply referred to a certain standard associated with motor sport or powerboating. As such, it had not been used as a trade mark and did not satisfy the definition in s 2 of the TMA. So it was unnecessary to consider if the mark was a “well known” trade mark under s 2 of the TMA. Therefore, the mark did not qualify as an “earlier trade mark” such that it could be considered under s 8(2)(b) or s 8(4)(b)of the TMA, 2015 GD at [73].

(e) There was no pre-trading activity that was sufficient to constitute goodwill for the purpose of s 8(7)(a) of the TMA on the basis of the new evidence, 2015 GD at [82].

[11] In this originating summons, the appellant appealed on the grounds that:

[12] At the hearing before me, the appellant submitted that the salient points of its appeal were:

(a) The AR failed to consider if the unregistered mark – the plain F1 mark – was a well known trade mark as at the relevant date, and thus an earlier trade mark for the purpose of opposition proceedings under the TMA;

(b) The AR at the rehearing failed to properly consider the further evidence, which indicates that the plain F1 mark was well known to the relevant sector of the public, if not the public at large;

(c) As a result of her finding that the plain F1 mark was not well known in Singapore as at the relevant date, the AR failed to consider the rest of the inquiry under s 8(4)(b) of the TMA; and

(d) The AR erred in finding that there was no goodwill in the plain F1 mark and as a result of her finding, she failed to consider the rest of the inquiry in the tort of passing off.

[13] The priority date claimed for the application mark is 11 January 2007. Therefore, the appellant’s earlier trade marks for the purpose of opposition proceedings are its trade marks that predated 11 January 2007, the relevant date. Therefore, I agree with the AR that evidence that post-dates the relevant date is irrelevant to the opposition proceedings: see 2013 GD at [8].

[14] The appellant has three registered trade marks that can be considered earlier trade marks for the purpose of opposition proceedings, as they were registered before the relevant date. These trade marks, which were registered on 5 September 1997 (priority claim: 30 May 1997) are:

[15] The appellant contends that the plain F1 mark – “F1” – is also an earlier trade mark for the purpose of opposition proceedings. “F1” was in fact registered on 10 May 2007, after the relevant date. The question is whether as at the relevant date, “F1” qualifies as an earlier, albeit unregistered, mark.

[16] Under s 2(1) of the TMA, an “earlier trade mark” is:

[17] Therefore, to qualify as an earlier trade mark, the plain F1 mark must be a well known trade mark as at the relevant date. If so, the appellant may rely on it as an earlier trade mark – and not only on its three registered marks – to oppose the registration of the application mark.

[18] Under s 2(1) of the TMA, a “well known trade mark” means:

[19] Therefore, an unregistered trade mark that is well known in Singapore can be an earlier trade mark.

[20] The respondent submits that the plain F1 mark is descriptive, which impacts on whether it is the appellant’s earlier/well known trade mark as at the relevant date. Being descriptive, the plain F1 mark can become well known only if it has acquired distinctiveness through use. The term “F1” is descriptive as its primary meaning refers to a set of motor racing standards. While “F1” may have acquired a lot of use here today (the annual F1 night races started in September 2008 with the 2008 Formula 1 Singtel Singapore Grand Prix), the question is to be answered with reference to the relevant date.

[21] In support of its argument, the respondent cites the High Court’s decision in Societe Des Produits Nestlé SA and another v Petra Foods Ltd and another [2014] SGHC 252 (“Nestle”). In Nestle, the court held:

[22] In Nestle, the court noted that under s 2(1)(b) of the TMA, a well known trade mark is an unregistered trade mark that is well known in Singapore (see [18] above). However, the court, in examining the policy behind the protection of well known trade marks, held that an “unregistered trade mark” will necessarily imply the exclusion of an unregistered trade mark that is deemed to be unregistrable under s 7 of the TMA (see Nestle at [231]–[234]). I turn to s 7(1) of the TMA, which states:

[23] Under s 7(1)(a), a mark cannot be registered if it does not meet the definition of a trade mark in s 2(1), which defines a trade mark as:

[24] Under ss 7(1)(b)–(d), inherently non-distinctive marks are also rejected if they are devoid of distinctive character, descriptive of some quality or characteristic of the goods or services in question and have become customary in the current language or established practices of the trade: see Ng-Loy Wee Loon, Law of Intellectual Property of Singapore, (Sweet & Maxwell, 2nd Ed, 2014) (“Law of Intellectual Property of Singapore”) at para 21.3.22.

[25] However, under s 7(2) of the TMA, marks caught by ss 7(1)(b)–(d) can be registered if they have acquired distinctive character as a result of the use made of them, ie, de facto distinctiveness.

[26] On distinctiveness, the respondent relies on the Court of Appeal case of Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc and another and another appeal [2014] 1 SLR 911 (“Staywell”). In Staywell, the court stated that distinctiveness refers to the capacity of a mark to act as a badge of origin; this capacity can either be inherent or acquired through use. The court held (at [24]):

[27] In Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber and Franz Attenberger [1999] ETMR 585 (ECJ), the European Court of Justice interpreted Article 3(3) of the First Council Directive 89/104/EEC. This is similar to s 7(2) of the TMA, which renders registrable an inherently non-distinctive mark if it has acquired distinctiveness through use (see [25] above). The ECJ held (at [54]) that if it is found that “a significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark, it must hold the requirement for registering the mark to be satisfied”.

[28] In Nestle, the High Court (at [165]) referred to James Mellor et al, Kerly’s Law of Trade Marks and Trade Names (Sweet & Maxwell, 15th Ed, 2011) (“Kerly”) when it discussed the meaning of “identify goods as originating from a particular undertaking because of the trade mark”. The authors made the following propositions at para 8-027:

[29] To summarise, a trade mark that is capable of distinguishing a trader’s goods and services from those of others (thus meeting the definition of a trade mark in s 2(1) of the TMA) may nevertheless be unregistrable due to s 7(1)(b)–(d) of the TMA if it is not inherently distinctive, unless it has acquired distinctiveness through use (thus triggering s7(2)). While Nestle is under appeal, I agree that the meaning of “unregistered trade mark” must necessarily exclude unregistered trade marks that are unregistrable under s 7. Therefore, such trade marks, including those that are devoid of distinctiveness, can never qualify for protection as well known trade marks under the TMA. Otherwise, to cite an example, immoral and deceptive marks – which are barred from registration by s 7(4) of the TMA – can receive protection simply because they are well known. As Nestle held (at [233]):

[30] I understand that the question of whether the meaning of “unregistered trade mark” excludes an “unregistrable” mark is one of the issues being considered by the Court of Appeal in Nestle and that arguments have been made that it excludes only unregistered marks that are “unregistrable” under the absolute grounds in s 7 of the TMA and not under the relative grounds in s 8. For the purposes of this judgment, therefore, I confine “unregistrability” to the absolute grounds in s 7 of the TMA.

[31] I now consider the respondent’s submissions that the words “F1” and “FORMULA 1” are descriptive and lack distinctive character in relation to sports events and the related goods or services, such as merchandising. The respondent submits that the appellant has provided no evidence to show that “F1” or its three registered marks have acquired distinctiveness.

[32] In the 2013 GD at [59], the AR found that “F1” was descriptive. This led her to be slow in granting it well known mark protection. She stated:

[33] The AR found that the evidence suggested that the plain F1 mark was “descriptive of a particular class or standard of sport in both motor racing and powerboat racing” (at [60] of the 2013 GD). She found that the respondent’s evidence also showed that “F1” was “the name of a particular standard associated with power boating, as opposed to an invented word to describe the Applicants’ power boating event” (at [61] of the 2013 GD). This included:

[34] The AR also found that “F1” was used in the context of powerboating in 2003 and 2004, at a time when the appellant’s “Formula 1” mark was already registered (see 2013 GD at [62]). Numerous newspaper and Internet articles referred to the respondent’s races as the “F1”/ “FORMULA 1/ONE” powerboat race in 2003 and 2004. Both powerboating and motor racing were referred to in the media as “F1” events without any evidence that the public associated “F1” with motor racing in particular. The news articles that demonstrated the equal use of “F1” in the context of both sports were:

[35] At the rehearing before the AR, the respondent tendered further evidence that the plain F1 mark, which is commonly abbreviated from Formula 1 or Formula One, is descriptive of a class of sport. This included:

(a) A Wikipedia article on “Formula One” describing the term as referring to “the highest class of single-seater auto racing”;

(b) A Wikipedia article on “Formula racing”, which explains that “formula racing” refers to any of several forms of open-wheeled single seater motorsport;

(c) An article in The New Straits Times in Malaysia dated 26 October 2000 headlined “Close gap between F1 and karting”, which describes the various tiers of racing such as Formula One, Formula Three and F2000, although the AR noted that this article referred to the Malaysian market;

(d) An article in The Straits Times dated 24 August 2002 headlined “So you want to be an F1 driver?” that pertains to the Singapore market and talks about how drivers move up the various rungs from Formula Three (F3) upwards; and

(e) An article in The Straits Times dated 31 August 2003 headlined “Mark his progress on the F1 track”, which discusses how Australian driver Mark Webber scaled the different tiers of motor sports races, from “Formula Ford”, “Sportscars”, “F3” and “F3000”.

[36] The AR held that the last two articles appeared to corroborate the conclusion in Wikipedia that the plain F1 mark represented a particular standard for motor car racing.

[37] Moreover, the AR found in the 2015 GD at [69] that the further evidence showed “at least two possible undertakings that the relevant sector of the public would associate with the Plain F1 Mark, and therefore, it is not distinctive of the Opponents alone” [emphasis in original]. For example, it was reasonable to conclude that in 2005, the relevant sector of the public in Singapore would associate the plain F1 mark with the respondent’s powerboat race. She based this on the respondent’s video recordings of its powerboating championships in 2005, from which she observed the following:

a) The event was held in the Marina Bay area, which is essentially a waterfront area overlooking the Central Business District (CBD);

b) The powerboat race was attended by a crowd of people who sat along the sides of the river;

c) The voice-over to these videos refers to the event as “the 6th annual grand prix of Singapore” (at 42:43-42:38 of MC-3A);

d) The banners to this event on the video screen refer to it as “F1 UIM World Championship” and “GP of Singapore”;

e) The Plain F1 Mark appears on one of the boats in the competition, on the back of a person's t-shirt (in a prominent location), on the commentator’s microphone on the video screen, on the victory podium (“F1 World Championship 2005”).

[38] However, the AR found that at around the same time, the general public might also have associated the plain F1 mark with motor racing or even more specific events such as the appellant’s championship or the Sepang Grand Prix in Malaysia. For example, television broadcasts of the appellant’s championship took place in September 2005, the same year and the same month as the respondent’s powerboat race. The appellant had provided evidence of the broadcast and newspaper articles in 2005 that made reference to the plain F1 mark in relation to its motor races.

[39] The respondent submits that I should uphold the AR’s findings. The plain F1 mark was descriptive and had not acquired distinctiveness. To become distinctive, it is not enough that a section of the public may associate “F1” with the appellant or that the motorsports races organised by the appellant are known as “F1”. That is insufficient to show trade mark significance as it has to be shown that “F1” signifies trade origin (see Kerly at [28] above). This, the respondent contends, was not established at both hearings before the AR. It also highlights that even the appellant itself sees “F1” as being indicative of a classification of motor sport, rather than as a trade mark. This was also noted by the AR, who pointed out in the 2013 GD at [60] that the appellant submitted that “F1” referred to a set of rules identifying the technical specifications that motor cars must conform to, to compete in the appellant’s championship. The respondent also states that had the appellant truly regarded the plain F1 mark as its trade mark, it would have applied to register “F1” along with the other registered marks in 1997. Further, there is also evidence that “F1” has been used in a descriptive sense in other sports such as airplane racing.

[40] In view of the foregoing, I agree that prior to the relevant date, the terms “F1” and “Formula 1/One” were descriptive. “F1” was used to refer to a standard by which vehicles – whether motor cars or powerboats – were categorised, and the media had not associated “F1” exclusively with the appellant. Since the plain F1 mark had not acquired distinctiveness as at the relevant date, s 7 of the TMA rendered it unregistrable, although it was registered in May 2007, apparently without opposition. However, the respondent argues that this did not mean the respondent could not subsequently apply to cancel the registration. Since I accept that an unregistrable mark is outside the meaning of an “unregistered trade mark” in the TMA (see [29] above), “F1” was not an unregistered mark that was well known in Singapore, ie, a “well known trade mark”, by the relevant date. It therefore could not be an “earlier trade mark” for the purpose of opposition proceedings.

[41] Notwithstanding this conclusion, I will consider if the plain F1 mark could be considered well known based on the factors in s 2 of the TMA.

[42] As stated above at [18], an unregistered trade mark that is well known in Singapore is a well known trade mark under s 2(1) of the TMA. Section 2(7) provides guidance on whether a trade mark is “well known in Singapore”:

[43] While the court must have regard to the list of factors in s 2(7) in assessing if a trade mark is well known in Singapore, the Court of Appeal in Novelty Pte Ltd v Amanresorts Ltd and Another [2009] 3 SLR(R) 216 (“Amanresorts”) noted (at [137]) that these factors “are not an exhaustive list” and are “more accurately described as a set of guidelines”. However, the court (at [140]) held that s 2(7)(a) cannot be disregarded because of the deeming provision in s 2(8), which states:

[44] The court stated (at [140]): “Indeed, it appears that all the other factors listed in s 2(7) are irrelevant once it is determined that the trade mark in question is well known to “any relevant sector of the public in Singapore” (per s 2(7)(a))”.

[45] As for “relevant sector of the public in Singapore”, s 2(9) of the TMA provides guidance:

[46] In the 2013 GD at [57], the AR found that the relevant sector of the public could minimally include the Singaporean fans who visited the Sepang circuit to watch the Malaysian leg of the appellant’s motor races. On a broader view, the relevant sector of the public would also include the Singapore distributors and readers of the “F1 Racing” magazine in Singapore as well as the actual and potential consumers of the range of products offered for sale (including clothing, headgear, bags, stationery, car accessories, personal effects, toys and games, souvenirs and household items). However, the AR found that the case did not turn on the definition of the relevant sector of the public as there was no evidence to show that the plain F1 mark was well known to either group of people.

[47] The respondent submits that this finding is correct and that the appellant’s evidence prior to the relevant date clearly falls short of the standard of evidence produced in Amanresorts which enabled the Court of Appeal to find that the “Aman” names were well known in Singapore. The evidence in Amanresorts, as summarised in the 2013 GD at [52], included:

(i) Worldwide sales of their goods and services of more than S$39 million in 1995 to more than US$86 million in 2006;

(ii) An international reservations office located in Singapore that handled approximately 30% to 40% of their global reservations;

(iii) 1,382 Singaporean visitors to Amanusa Bali between 1995 and 2005;

(iv) More than US$3 million spent on promoting and marketing their goods and services globally;

(v) Newsletter “Amanews” distributed to 2,700 persons in Singapore;

(vi) Marketing strategy to promote the Amanresorts Group to 900 American Express Centurion members and 4,200 American Express Platinum members in Singapore; and

(vii) Features in several local publications, such as Asian Style Hotels, Singapore, in 2005.

[48] However, in the present case, the respondent submits that the appellant provided merely general and unsubstantiated claims on the use of its marks. Except for two instances, the appellant’s claims make no reference to the Singapore market (see 2013 GD at [54]):

(a) The publication of a monthly magazine titled “F1 RACING”, which is “published in numerous countries including Singapore”; and

(b) The grant of an “Asian-wide license, including Singapore”, to a company to use the F1 logo on a range of products.

[49] I agree that the two assertions should not be accorded weight without evidence of the magazine’s circulation in Singapore and evidence that the licensee has marketed products in Singapore. The respondent also rightly points out that while the appellant made claims concerning the grant of licenses to use its trade marks worldwide, no evidence had been adduced to the use of the marks in Singapore.

[50] I also examined three newspaper articles from the Today newspaper that were published before the relevant date:

(a) “Singapore pit-stop for F1?” dated 28 March 2006;

(b) “Thumbs up for F1 in S’pore” dated 29 March 2006; and

(c) “Mosley backs F1 in Singapore” dated 31 March 2006.

[51] The 28 March 2006 article related the possibility of the appellant’s motor races taking place in Singapore as early as in 2008. However, this does not demonstrate that the appellant’s trade marks had become well known by the relevant date. The 29 March 2006 article states that the Sepang circuit attracts about 15,000 Singapore fans. However, the origin of this figure is unclear and does not, without more, show how well known “F1” was in Singapore. The 31 March 2006 article was an interview with former FIA president Max Mosley, who stated his support for a Singapore leg of the Grand Prix. The relevant part of the article reads:

[52] In the 2013 GD, the AR considered at [71] that the references to Singaporeans attending the motor races in Malaysia could be “the only piece of evidence of the use of the “F1” and “FORMULA 1/ONE” in a foreign country that may contribute to them being well known in Singapore”. However, she found deficiencies in the evidence:

[53] In view of the above, I have no reason to disagree with the AR’s finding that the plain F1 mark – and the rest of the appellant’s marks – was not well known to the relevant sector of the public in Singapore. The AR held at [65] of the 2013 GD:

[54] The appellant urged me to relook the further evidence that the AR reviewed for the 2015 GD. The appellant submitted that the AR had given short shrift to its evidence at the re-hearing. The appellant’s contention was that even if the plain F1 mark was not well known to the public at large, it was well known to a segment of the Singapore public as at the relevant date.

[55] This evidence included an article in the weekend edition of the Today newspaper dated 16–17 April 2005 that was headlined “S’pore can’t afford to let casino chance pass us by: MM Lee”. The appellant drew my attention to the following excerpt:

[56] That “millions of eyes are watching” was not in reference to the Singapore public, but to viewers all over the world. As such, this evidence is too general to support a finding that “F1” was well known to the relevant sector of the public in Singapore. In any event, the AR had considered the evidence. In the 2015 GD at [35], she cited the article in concluding that the appellant appeared “to be confusing the notion of ‘popularity’ with the technical meaning of what is ‘well known’”.

[57] Another article, dated 7 August 1999, was from The Straits Times. It was on “Malaysia’s Sepang F1 Circuit” and headlined: “A winner, says Mika Hakkinen”. Part of the article reads:

[58] The appellant’s point was that the figures showed the notoriety of “F1” as a sport and brand even in 1999, about eight years before the relevant date. Therefore, the plain F1 mark must at the very least be well known to the relevant sector of the public. This article suffers from the same deficiency as the previous article (see [56] above). Moreover, at that time, it is unclear if racing fans would have taken “F1” to refer only to the appellant’s motor races and no other sport. In other words, what was “F1” well known in reference to? As I have found, the appellant’s plain F1 mark was descriptive and had not acquired distinctiveness. Having reviewed this article along with other articles, the AR held in the 2015 GD at [47] that the articles showed that the Singapore public was likely to have associated the plain F1 mark with motor racing prior to the relevant date. However, she went on to state at [48]:

[59] The appellant also referred to a book written by a local journalist with the Today newspaper, Ian De Cotta. The book, titled “The Singapore Grand Prix (50 years in the making)”, was published in September 2008, after the relevant date. At the first hearing, the appellant had tendered some portions of the book. The AR noted that the appellant was using the book as “evidence that proves the existence of historical facts regarding a ‘Singapore Grand Prix’ in the 1960s – 1970s”. She treated the facts in the book as hearsay and inadmissible. In my subsequent order to the parties prior to the rehearing, I disallowed the appellant from admitting the remaining portions of the book. In its submissions, the appellant states that the information on the “Singapore Grand Prix” in the 1960s and 1970s can help demonstrate how well known the “F1” races in Singapore were during the relevant period:

However, I do not think that the book is of assistance to the appellant for the reason that the motor races were referred to as the “Singapore Grand Prix”.

[60] The appellant also tendered a television rights agreement in respect of the 2006–2010 FIA Formula One Championship with ESPN Star Sports to broadcast the championship in Asia, including in Singapore. The agreement was entered into on 16 September 2005. The appellant submits that the agreement, inter alia, allows ESPN Star Sports to undertake that its website and printed materials will display the following trade mark notice:

[61] In the 2015 GD at [46], the AR observed that the agreement was a private contract that cannot confer trade mark rights – which are obtained through registration or asserted as a common law right through use as a trade mark – on the appellant. Without more, the agreement is insufficient to allow an inference that “F1” was well known or recognised by the relevant sector of the public, especially given that the plain F1 mark was associated with at least two undertakings prior to the relevant date (see above at [37]-[38]).

[62] Hence, I find that the appellant’s plain F1 mark was not well known or recognised by the relevant sector of the public in Singapore as at the relevant date. It follows that it cannot be deemed as a mark that is well known in Singapore pursuant to s 2(8) of the TMA.

[63] I move on to the other factors in s 2(7) of the TMA. The AR in the 2013 GD at [66] cited the explanatory notes to the World Intellectual Property Organization’s (WIPO) Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. The notes state at [2.4]:

[64] The AR considered it apparent from the explanatory notes that “an opponent who claims that his mark is well known in another country or territory should demonstrate how this evidence contributes to the mark being well known in Singapore” (see 2013 GD at [67]). In this regard, the respondent submits that the appellant’s evidence fails to explain how the worldwide use of its marks contributed to the marks being well known here. This was also the AR’s finding, which I agree with. For example, the appellants claimed that licences for computer games had been granted from as early as 1994; with as many as four global licensees in previous years. However, there were no further particulars as to the locations and quantity of the games that were sold and nothing to suggest that the efforts had contributed to the mark being well known in Singapore. While the appellant stated that a worldwide licence had been granted to an Austrian company to use the “F1” logo on watches, the AR found no further particulars as to which countries “worldwide” referred to, no evidence on the use of the plain F1 mark on the watches sold in those countries and nothing to suggest that the efforts had contributed to the mark being well known in Singapore.

[65] Before the AR, the appellant relied on a survey that was conducted in 2005 in Germany to assert that “F1” in connection with Formula 1 motor races enjoyed a high degree of distinctiveness and had even acquired a secondary meaning in relation with motor racing events such that “F1” was considered a well known mark. Although the survey was conducted in Germany, the results were “exemplary” for other countries such as Singapore, where the appellant’s championship was televised and promoted. However, I find that the German survey is of no assistance as it concerns a different audience in Europe.

[66] The AR noted in the 2013 GD at [73] that the appellant had repeatedly emphasised that they had numerous trade mark registrations around the world. The respondent points out that most of the appellant’s local registrations were filed or have priority dates after the relevant date. For the foreign registrations, the respondent submits that the appellant had not provided supporting evidence of an alleged 2,250 trade mark filings for “F1/FORMULA 1 marks in 89 countries. Given the international nature of the appellant’s enterprise, I am prepared to believe that the appellant has a substantial number of filings. However, as the AR stated in the 2013 GD at [73], registrations do not automatically equate to trade mark use and the appellant has not proved use or recognition of its marks. Therefore, the registrations, without more, do not help to prove that the appellant’s marks are well known.

[67] On this factor, the appellant submits that various other jurisdictions have held that the plain F1 mark is well known and indicative of its motor racing championship.

[68] It cites a 2006 decision from the Chinese Trademark Review and Adjudication Board, where it succeeded in cancelling the trade mark U.I.M. World F-1 Championship and device. In a 2011 decision, the Canadian Intellectual Property Office also held in favour of the appellant, which in 2005, opposed an application to register “F1EMPORIUM”. In that decision, it was held that the appellant’s evidence showed that the plain F1 mark, while not inherently strong, had acquired sufficient distinctiveness to become a famous trade mark. The appellant also cites a Turkish decision by the Ankara Commercial Court of First Instance in 2003, which stated: “The Formula 1 trade mark is a well known trade mark. Therefore the Court did not take the expert report into consideration which is stating that F1 is not a world wide known trade mark. All knows the term F1 in Turkey.” In a Court of Rome decision in 2004, the court stated that the trade mark “F1 Formula 1” “undoubtedly belongs to the category of so-called strong and renowned trade marks [emphasis in original]”. In Romania, the appellant also successfully opposed the application of “FD1 Formula Drift One CHAMPIONSHIP” in 2011, although this happened after the relevant date.

[69] The appellant also cited two decisions from the WIPO Arbitration and Mediation Center. These were disputes over domain names. In a 2009 decision based on the appellant’s complaint in February 2009, the panel ordered the domain name <f1rocks.com> to be transferred to the appellant. In the other decision based on the appellant’s complaint in June 2011, the panel ordered the domain names <f1showcar.com>, <f1showcar.net> and <f1showcars.com> to be transferred to the appellant.

[70] Based on the above, the appellant submitted that the plain F1 mark is “palpably well-known in Singapore, as it is in various other jurisdictions”.

[71] In my order to the parties, the foreign decisions were to be placed before the Registrar of Trade Marks by way of written submissions and not as further evidence. Therefore, the decisions are to be regarded as authorities and not evidence that “F1” is the appellant’s well known trade mark.

[72] The question is whether the plain F1 mark was well known by the relevant date and in Singapore. Therefore, the decisions that came after 11 January 2007 are of no assistance. Further, I accept the AR’s view in the 2015 GD at [86] that the evidence in each jurisdiction is bound to be different as it concerns different sectors of the public in different jurisdictions. Therefore, the foreign decisions do not assist “in determining the threshold issue of whether the Plain F1 Mark is well known to the relevant sector of the public in Singapore” [emphasis in original]. As the respondent submits, foreign decisions cannot be binding on Singapore courts as intellectual property rights are jurisdictional in nature; findings of fact based on the evidence that is put before a foreign court are limited to that jurisdiction.

[73] The WIPO decisions on the disputed domain names are also unhelpful. They are limited to their own context under the Uniform Domain Name Dispute Resolution Policy: see Tan Tee Jim, Law of Trade Marks and Passing Off in Singapore vol 2 (Sweet & Maxwell, 3rd Ed, 2014), which states (at para 20.130) that “the Uniform Dispute Resolution Policy is not, and was not designed to be, a substitute for the courts”; its decision has “no binding effect other than on the registrar of the domain name in question”.

[74] The appellant did not adduce evidence in relation to s 2(7)(e).

[75] Having considered the factors in s 2(7) of the TMA, I find insufficient evidence that the plain F1 mark was “well known in Singapore” as at the relevant date. Therefore, it is not an “unregistered trade mark that is well known in Singapore”, ie, a “well known trade mark” under s 2 of the TMA. It follows that it is not an “earlier trade mark” that the appellant could use in the relevant grounds of opposition under the TMA. The appellant’s earlier trade marks are limited to its three registered marks (see [14] above).

[76] Section 8(2) states:

[77] The plain F1 mark does not qualify as an earlier trade mark. Even if it does, I doubt that “F1”, being unregistered at the relevant date, could be used to oppose the application mark on this ground. Under s 8(2), an identical/similar trade mark to the earlier trade mark cannot be registered if the registration is for goods or services that are similar to those for which the earlier trade mark is protected. This implies that the earlier trade mark is one that has been registered, so that it is protected for classes of goods or services. (See also Burton Ong, “Protecting Well-Known Trade Marks: Perspectives from Singapore” [2005] 95 TMR 1221 at 1234, in particular, footnote no 38).

[78] To succeed under s 8(2)(b), the appellant must satisfy the court that:

(a) The application mark is similar to any of its three registered marks;

(b) The application mark is to be registered for goods or services that are identical or similar to those that any of the three registered marks are protected for; and

(c) There exists a likelihood of confusing arising from the above.

[79] The “step-by-step” approach to an analysis under s 8(2)(b) of the TMA was laid out in Staywell, where the court held (at [15]) that the three requirements – similarity of marks, similarity of goods or services and likelihood of confusion arising from the two similarities – are systematically assessed. The first two requirements are individually assessed before the third element is assessed in the round.

[80] The comparison entails an assessment of visual, aural and conceptual similarities. The following principles were set out in Hai Tong Co (Pte) Ltd v Ventree Singapore Pte Ltd and another and another appeal [2013] 2 SLR 941 at [40]:

[81] In Staywell, the court also held that technical distinctiveness is an “integral factor” in the marks-similarity inquiry:

[82] In Lionel Bently & Brad Sherman, Intellectual Property Law (Oxford University Press, 3 Ed, 2009) at 866–867 (“Bently”), the authors stated that “the less distinctive the earlier trade mark, the less literal or visual alteration is necessary to ensure that the later mark is not similar”:

[83] The respondent submits that the appellant has no evidence to show the distinctiveness of its three registered marks through use. Therefore, it submits that the registered marks do not enjoy any higher threshold of protection as against the application mark.

[84] For ease of comparison, the visual, aural and conceptual components of the application mark will first be addressed. I find no reason to disagree with the AR’s analysis of the application mark in her 2013 GD. I also accept the respondent’s submissions on the application mark.

[85] Visually, the AR held in the 2013 GD at [82]:

She held at [85]:

[86] Building on the AR’s analysis, the respondent submits that there is no reason for any element in “F1H20”, such as “F1” or “H20”, to be considered the essential and dominant element. The entire mark is the essential, distinctive and dominant element.

[87] Aurally, the AR found in the 2013 GD at [86] that “F1H20” was likely to be broken down into individual letters and numbers and pronounced as the five-syllabled “F-ONE-H-TWO-OH”. The respondent submits that every single syllable will be pronounced, with none skipped, as “F1H20” comprises a string of letters and numbers.

[88] Conceptually, the AR found in the 2013 GD at [84] that “F1H20” was based on the theme of a water sport. The respondent submits that as “H20” brings the chemical formula of water to mind, some people will associate the application mark with a sports race that is held on water. Alternatively, the application mark can be considered devoid of conceptual significance as a random string of letters or letters.

[89] I reproduce this registered mark for convenience of comparison:

[90] I agree with the AR that there is no visual similarity between “F1H20” and the appellant’s stylised F1 Formula 1 mark: see 2013 GD at [82]. She rightly pointed out that the application mark is a “straightforward, unembellished combination of letters and numbers”. But the appellant’s trade mark looks very different. As the AR found:

[91] Aurally, the AR rightly held in the 2013 GD at [83] that both marks are dissimilar. She performed a quantitative assessment of the relative number of syllables which the two marks have in common: see Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2013] 1 SLR 531 (“Sarika”) at [28] and considered how the average Singaporean consumer will pronounce the words. The average Singaporean consumer will pronounce the application mark as five syllables (see [87] above). However, the appellant’s mark will either be pronounced as “F-ONE” (two syllables) or “FOR-MIU-LA-ONE” (four syllables). As the AR held at [83]:

[92] Conceptually, the marks are dissimilar as F1H20 is premised on the theme of a water sport while the appellant’s mark is designed to give the impression of speed: see 2013 GD at [84].

[93] Visually, the AR held in the 2013 GD at [85] that the marks are similar to the extent that the average Singapore consumer would think of some formula. However, the marks share “only some slight similarity” as the application mark is an abbreviation, while the appellant’s mark is a full word.

[94] Aurally, the AR found the marks dissimilar in the 2013 GD at [86]:

[95] On conceptual similarity, the AR concluded in the 2013 GD at [87]: “F1H2O is centered around the concept of a sport held on water whilst FORMULA 1 is centered around the concept of the top class of motor racing. The former focuses on the idea of location (ie. on water) whilst the latter focuses on the idea of status (ie. pinnacle, top in its class), and are therefore conceptually different.”

[96] I reproduce this registered mark for convenience of comparison:

[97] Visually, the two marks shared no similar elements, as the AR held in the 2013 GD at [88]. Aurally, no similarity arose as the syllable count and the pronunciation of each syllable are different – the appellant’s mark could be referred to as “FIA” or “Formula 1 World Championship”: 2013 GD at [89]. In any event, aural similarity was the least important element. Conceptually, the two marks were dissimilar as the appellant’s mark referred to a motor car race on an international scale held on land, instead of water: 2013 GD at [90].

[98] I accept the AR’s comparisons of the application mark with the three registered marks. The application mark is visually, aurally and conceptually dissimilar from each of the three registered marks. As a whole, the application mark is dissimilar from each of the three registered marks. Further, as there is no evidence that the three marks had acquired distinctiveness by the relevant date, less literal or visual alteration is required to ensure that the application mark is dissimilar (see [83] above).

[99] As the respondent does not dispute that the goods or services it seeks to register the application mark for is similar or identical to that for which the appellant is protected, I assume similarity between the goods or services.

[100] I have found that the application mark is not similar to the appellant’s earlier registered marks. If I am wrong on this and “F1H20” is similar to any of the registered marks, such similarity can only be very slight as “F1” and “FORMULA 1” are descriptive when used in relation to sporting events and lack distinctiveness. The likelihood of confusion is lower where there is less similarity between the conflicting marks: see Staywell at [96(a)].

[101] In Staywell (at [96]), the court held that the impact of the similarity of the marks and the goods or services on consumer perception is relevant to the confusion inquiry. The court held (at [64]):

[102] Given the conceptual disparity between the application mark and the appellant’s marks, the reasonable consumer is unlikely to be confused. Further, the possibility of confusion is speculative. The respondent has used the term “F1” in relation to its events since 1990. The appellant’s marks were registered seven years later in 1997; its first night motor car race in Singapore was only in September 2008. Against this chronology, there has to be more evidence that demonstrates that a likelihood of confusion has arisen or will arise. In Sarika, the Court of Appeal held:

[103] Without more evidence, I am unable to find in the appellant’s favour. Therefore, the opposition under s 8(2)(b) fails.

[104] I have not considered the plain F1 mark under s 8(2)(b) of the TMA as the ground contemplates conflicts with earlier, registered trade marks. In any event, as I also find the plain F1 mark dissimilar to the application mark (see [109] below), the appellant cannot prevail even if “F1” is considered. Moreover, the appellant has provided little beyond mere assertions of confusion based on the purported similarities between “F1” and “F1H20”.

[105] Section 8(4) states:

[106] The respondent points out that the appellant relies only on the plain F1 mark for this ground. The appellant did not dispute this in the hearing before me. In any event, the appellant’s registered marks cannot succeed on this ground since I find them dissimilar to the application mark. Under s 8(4), an application mark cannot be registered if “the whole or an essential part” of it is identical or similar to the earlier trade mark. While the phraseology differs slightly from s 8(2) (where an application mark cannot be registered if it is identical or similar to the earlier trade mark), the comparison is the same: see Sarika at [70] and Law of Intellectual Property of Singapore at para 21.5.38 (including the attendant footnote).

[107] To succeed, the appellant must show that:

(a) The whole or an essential part of “F1H20” is identical with or similar to the plain F1 mark;

(b) The plain F1 mark is well known in Singapore;

(c) Use of “F1H20” on goods or services that it is to be registered for will indicate a connection between them and the appellant; and

(d) There is likely to be damage to the appellant’s interests.

[108] As the plain F1 mark was not well known in Singapore as at the relevant date, the opposition on this ground fails. Even if “F1” was well known, it was not similar to the application mark as at the relevant date.

[109] I accept the respondent’s submissions that the application mark and the plain F1 mark are visually, aurally and conceptually dissimilar. I have outlined the features of the application mark at [84]–[88] above.

[110] Visually, the plain F1 mark, which comprises one letter and one numeral, is less than half the length of the application mark. As the term “F1” is descriptive and lacks distinctiveness, a lower degree of visual alteration is required to ensure that the application mark is dissimilar to it (see Bently at [82] above). Moreover, I do not find the “F1” element in the application mark to be any more dominant than its “H20” element.

[111] For aural similarity, the two marks do not share the same number of syllables on a quantitative assessment. In Staywell (at [32]), the court described quantitative assessment as an “alternative approach”. The court also considered the dominant and distinctive components of the marks when read out: Staywell at [31]. See also the The Audience Motivation Company Asia Pte Ltd v AMC Live Group China (S) Pte Ltd [2015] SGHC 77 at [40].

[112] “F1” is the common denominator of the plain F1 mark and the application mark. “F1” forms the first two syllables of the application mark and the whole of the plain F1 mark and will be pronounced in the same way in both marks. The appellant submits that the “H20” component in the application mark, as the molecular formula for water, is descriptive.

[113] However, I agree with the respondent that the essential, distinctive and dominant element is the entire application mark as a whole.

[114] The appellant submits that the “first component of a trade mark is often considered more important for the purposes of distinction”. It cites Conde Nast Publications Inc v Union des Editions Modernes [1979] 46 CPR (2d) 183 (F.C.T.D.) (“Conde Nast”) and Phantom Industries Inc v Sara Lee Corp (2000) 8 CPR (4th) 109 (T.M.O.B) (“Phantom Industries”) in support of its contention. The appellant states: “In this instance, the first component is the distinctive term ‘F1’. The Defendant has merely juxtaposed the name for the formula of water “H20” with the Plaintiff’s ‘F1’ mark”.

[115] In Conde Nast, the Federal Court of Canada found that the respondent had appropriated the appellant’s mark – MADEMOISELLE – in its entirety and added a suffix, “age tendre”. The court held at [34]:

[116] The importance of the beginning of words has been stated in cases such as London Lubricants (1920) Ltd’s application (Tripcastroid) (1925) 42 RPC 264, where it was held (at 279):

[117] However, while the court in Doctor’s Associates Inc v Lim Eng Wah (trading as SUBWAY NICHE) [2012] 3 SLR 193 noted that the “basis of the “first syllable” principle is that English speakers tend to slur subsequent syllables”, the rule does not apply in every case. It held (at [35]):

[118] In my view, the pronunciation of “F1H20” will not lead to the slurring of the last three syllables. In Phantom Industries, a case which the appellant has cited, the Canadian Trademarks Opposition Board held (at [13]):

[119] Therefore, where the first portion of a trade mark is used in a descriptive sense, its significance is lessened. As I have held, “F1” was descriptive at the relevant time. It described a class or standard of sport in motor racing and powerboat racing.

[120] On conceptual similarity, I also find both marks dissimilar. “F1H20” connotes a sport race that is held on water. It may also be considered as a random string of letters or letters and thus devoid of significance. However, as the respondent submits, “F1” – which had not acquired distinctiveness as at the relevant date – focussed on the idea of status (being at the pinnacle or in the top class) in the context of motorsport.

[121] In view of the above, I cannot accept the appellant’s submissions that whether “F1” is attached to “H20” as a prefix or suffix, the resulting mark is similar to the plain F1 mark. As a whole, the plain F1 mark and the application mark are different.

[122] Further, I refer to foreign decisions that held that the two marks are dissimilar on comparison. In a judgment dated 21 May 2015, the Court of Justice of the European Union upheld the decision dated 20 November 2012 of the Fourth Board of Appeal of OHIM or the Office for Harmonisation in the Internal Market (Trade Marks and Designs). The Board of Appeal found that between “F1” and “F1H20”, there was at best only a “very remote visual and aural similarity between the signs and no conceptual similarity at all”. The Court of Justice upheld the finding.

[123] Visually, it observed only a weak similarity due to the length of “F1H20” and the equal position that the components “F1” and “H20” occupy. Aurally, the differences in length and composition meant that the marks would be pronounced differently. While the beginnings of the marks were the same, that fact was insufficient to offset the differences. In addition, the difference between the lengths of the signs was more striking phonetically than visually. Therefore, the phonetic similarity was weak. Conceptually, the differences between the marks counteracted their weak visual and phonetic similarities. The court agreed with the Board of Appeal that “F1” was an abbreviation of “Formula one” which signified “the top class of professional motor racing”, according to an English reference dictionary. It held that “F1” was the term commonly used to designate a type of racing car and by extension, the races involving such vehicles. In contrast, “F1H20” would be perceived as a sequence of letters and figures or a chemical formula.

[124] The Court of Justice’s observations are pertinent. The respondent also cited favourable decisions from Switzerland’s Federal Administrative Tribunal and the Board of Appeals in Japan but I need not go into them.

[125] For completeness, I briefly consider the remaining elements in an opposition under s 8(4)(b)(i) of the TMA. As stated at [107(c)] above, the appellant must show that the use of the application mark in relation to the goods or services for which registration is sought will indicate a connection between them and the appellant.

[126] The “connection” element contains an implicit requirement of likelihood of confusion. The courts have held as much in the context of s 55(3)(a) of the TMA, which shares the same “connection” element as s 8(4)(b)(i). Section 55(3)(a) states:

[127] In Sarika, the court held (at [76]):

[128] It follows that the “connection” requirement in s 8(4)(b)(i) also has an implicit requirement of a likelihood of confusion. However, I have found that there can be no likelihood of confusion (see above at [100]–[104]).

[129] Section 8(4)(b)(i) also requires proof of the likelihood of damage to the appellant’s interests. It is unnecessary to discuss the respondent’s submissions in this respect as no damage arises without a confusing connection.

[130] The appellant submitted at the hearing before me that the AR should have discussed dilution. It contends that the plain F1 mark has been taken advantage of in terms of its prestige and popularity and that the respondent has tarnished the plain F1 mark by associating “F1” with the respondent’s “poorly organised power boat race”.

[131] Section 8(4)(b)(ii) sets out the anti-dilution right of the owner of an earlier trade mark which is well known to the public at large in Singapore. I have held that the plain F1 mark, as at the relevant date, was not well known to the relevant sector of the public. It follows that it would not have been well known to the public at large. Even if the plain F1 mark was well known to a sector of the public, it is highly unlikely to have been well known to the public at large as being the appellant’s trade mark as the appellant’s night races started only in 2008. The threshold set by s 8(4)(b)(ii) is high. As stated in the Law of Intellectual Property of Singapore at para 21.5.50:

[132] As the plain F1 mark was not well known to the public at large, it is unnecessary to go on to consider the two limbs in s 8(4)(b)(ii).

[133] Under s 8(7)(a):

[134] The provision recognises the law of passing off, which requires three elements to be proved: goodwill attached to the claimant’s product or service, misrepresentation that the defendant’s goods are the claimant’s goods or emanate from a source that is economically linked to the claimant and damage or likelihood of damage due to the defendant’s misrepresentation. The three-step process was laid out in The Singapore Professional Golfers’ Association v Chen Eng Waye and others [2013] 2 SLR 495 at [20] (“Professional Golfers”):

[135] Generally, goodwill cannot exist on its own. It attaches to a business in the jurisdiction. This is often proved by evidence, such as the trader’s sales and expenses incurred in promoting its goods and services in association with the mark or brand that they bear: see Professional Golfers at [22]. As the appellant’s first “F1” night race took place only in 2008, I agree with the respondent that the appellant could not have acquired goodwill as at 11 January 2007 – it had yet to commence business or trade in Singapore.

[136] However, as the AR correctly held (see 2015 GD at [76]), certain types of pre-trading activity will be recognised despite the requirement for business in the jurisdiction. In CDL Hotels International Ltd v Pontiac Marina Pte Ltd [1998] 2 SLR 550 at [58] (“CDL Hotels”), the Court of Appeal held:

[137] In Staywell, the court held (at [163(j)]):

[138] The Law of Intellectual Property of Singapore at para 17.4.38 emphasised the importance of requiring an unequivocal intention to enter the market. The author stated: “The unfairness to a plaintiff (whether he is a foreign trader or a local trader) is more pronounced when a plaintiff, who has a reputation in Singapore and has unequivocally demonstrated his interest in the Singapore market, is pre-empted by another trader who seeks to have a free ride on his reputation in Singapore.”

[139] Before me, the appellant submitted that while the AR recognised the possibility that a trader can have goodwill in a country before it operates a business in the jurisdiction, she erred in finding insufficient pre-trading activity, and hence insufficient goodwill, on the evidence before her.

[140] However, there is no reason to disagree with the AR. The appellant’s evidence does not demonstrate pre-trading activities that evince its unequivocal intention to enter the Singapore market. Before the relevant date, three news articles from the Today newspaper (see [50] above) merely stated the possibility of appellant having a race in Singapore in 2008. For example, the article dated 31 March 2006 and headlined “Mosley backs F1 in Singapore” quoted the former FIA president as saying: “If the infrastructure and financial commitment is in place, then it is always possible that Singapore could host a Grand Prix in 2008.” However such a statement does not amount to an unequivocal intention to enter the Singapore market.

[141] The appellant does not have evidence of its sales or expenses incurred in promoting its goods or services, such as evidence of heavy advertising prior to the relevant date. There were articles that suggested that the appellant’s Sepang circuit was popular among Singaporeans but the evidence was directed at the Malaysian circuit. It does not follow that because its championship had business presence in Malaysia, goodwill as to the “F1” mark was necessarily engendered in Singapore before the relevant date. As the AR held in the 2015 GD at [79]: “Specifically in relation to the Sepang Grand Prix, the activities relied on by the Opponents were not generating demand internally (within Singapore) but aimed primarily at promoting their business in Sepang, Malaysia.”

[142] Other articles documented the television broadcast in Singapore of the appellant’s championship and the promoting and marketing of “F1” merchandise. The appellant submits that these clearly show that it has taken substantial effort to establish goodwill in the “F1” mark in Singapore prior to the relevant date. The goodwill has caused the plain F1 mark to be distinctively indicative of its championship. However, as the AR pointed out in the 2015 GD at [78], the broadcasts in 2005 and 2006 were for the Italian and Monaco Grand Prix and “there is no indication that it was intended to generate demand in Singapore for the Opponents’ goods and services” [emphasis in original]. She also found that articles and advertisements on “F1” merchandise were in fact generating demand for other parties’ products.

[143] In several news articles, “F1” was used to refer to the appellant’s championship. However, I have found that before the relevant date, “F1” was used in a descriptive sense and not as a trade mark denoting the appellant exclusively. These articles do not evince the appellant’s unequivocal intention to enter the market. Other articles before the relevant date include a letter to the press dated 31 March 2005 by a self-professed “F1 fan”, urging the Singapore authorities not to let the chance to host the appellant’s championship slip past and a news article dated 18 May 2005 that claimed that Renault’s success in the championship had boosted sales of its cars. I share the AR’s doubts that such articles can constitute pre-trading activities as they were not conducted by the appellants: see 2015 GD at [79].

[145] Generally, goodwill cannot exist on its own but attaches to a business in the jurisdiction. The appellant had not started its races in Singapore at the relevant date. Pre-trading activities may lead to a finding of goodwill but the evidence does not support any such conclusion.

[146] Even if the appellant had the requisite goodwill, the evidence does not support any misrepresentation. When the term “F1” was first applied to the respondent’s powerboat racing championships in Singapore, it preceded the appellant’s night races here by 18 years. Before the relevant date, the plain F1 mark was not linked exclusively with the appellant. This is evident from several articles tendered by the respondents, which show that the media or third parties used “F1” in relation to the respondent. Hence, no misrepresentation can arise. It follows that there is no damage to the appellant’s goodwill.

[147] Under s 7(6), a trade mark shall not be registered if an application is made in bad faith. However, the appellant has not adduced any evidence to discharge its legal burden to prove bad faith. In contrast, the respondent has tendered evidence to support its assertion of prior use of the plain F1 mark in Singapore. Therefore, I agree with the AR in the 2013 GD:

[148] In the years since the start of the appellant’s annual night races in 2008, it could perhaps be said that the plain F1 mark has become distinctive of the appellant in Singapore. This is especially likely as it has been a few years since the respondent’s last powerboating championship was held here in 2011. However, for the purpose of these opposition proceedings, the findings have to be based on the evidence before the relevant date.