41 replies to this topic

[JohnS]

Last Sunday's Observer had a nice poster with it featuring 25 Classic Grand Prix Cars, as chosen by Maurice Hamilton. It's up on my son's bedroom wall now and looks great.

One interesting point though - next to the phrase 'Grand Prix' it has the letters TM - trademark. So, has Ecclestone managed to trademark the phrase 'Grand Prix', and if so, how did he manage that since 'Grand Prix' is used in so many other fields?

John

[kayemod]

Originally posted by JohnS
Last Sunday's Observer had a nice poster with it featuring 25 Classic Grand Prix Cars, as chosen by Maurice Hamilton. It's up on my son's bedroom wall now and looks great.

One interesting point though - next to the phrase 'Grand Prix' it has the letters TM - trademark. So, has Ecclestone managed to trademark the phrase 'Grand Prix', and if so, how did he manage that since 'Grand Prix' is used in so many other fields?

John

Sad but true, and I think you'd be surprised to learn just how much BCE has been able to trademark in the Grand Prix and F1 fields. He's even claimed ownership of the phrase 'Power hungry shortarse with too much money for his own good'. If you utter it, you'll have to pay a royalty to Bernard.

[RA Historian]

What if we think it?

[HDonaldCapps]

Originally posted by kayemod
Sad but true...

Certainly you jest....

[scheivlak]

Google 'Grand Prix' and this is on my first page http://www.ndrtv.de/grandprix/
This on my second: http://www.pontiac.c...dprix/index.jsp
This on my third http://www.dorna.com/ as well as http://www.a1gp.com/....aspx?teamId=19
This on my fourth: http://upcoming.org/event/152786/
And this on my fifth: http://www.ndrtv.de/...rix/teilnehmer/

Good Luck , mr. Ecclestone

[wildman]

If it had the letters 'TM' next to it, as opposed to the ®, it's a common-law trademark. Meaning basically that Bernie is attempting to assert rights to the phrase, but generic use of 'Grand Prix' has rendered his case so weak that he can't register the mark.

[mctshirt]

It seems it's a very serious business...even the British Grand Prix was subject to a trade mark wrangle between the Formula One Licensing BV and the RAC: http://www.patent.go...ults/o04407.pdf

[philippe charuest]

no way . its impossible to do . its a too old and too widely use expression in many domain , its like to try to copyright words like cup. trophie or championship

[Frank S]

Originally posted by philippe charuest
no way . its impossible to do . its a too old and too widely use expression in many domain , its like to try to copyright words like cup. trophie or championship

So you reckon the International Olympic Committee couldn't force some owner of a Los Angeles Greek restaurant to change its name from "Olympic"? I don't remember the exact circumstance, but when I learned the IOC was throwing its weight around in that manner, I quit supporting them.

So seems to me, old and widely-used doesn't stand up to filthy and lucre.

--
Frank S

[f1steveuk]

Sadly, it is true! I know I have said this before, I worked for "the wee one" and the list of trade marks regarding F1, Formula One, GP etc etc is ridiculous. But there is an up side!!!!

Mr Ecclestone hasn't got any time for the world of the pc, world wide web or the internet. He avoided it for years, regardless of the advice of those around him, probably because he simply didn't understand it. I was chatting to a friend of mine outside the digital broadcast village at Silverstone, and a man turned up wearing a T shirt, with the words, "F1.com, Formula 1.com, Formula One.com", asking to see Mr E. Mr E refused, far too busy! Later I found out the when Mr E was dragged into the world of the web, he decided F1.com it was. "Er, you can't have that". "What do you mean, can't have it?!!" says the small one. and it's explained that someone else had got there first. Likewise with Formula One, Formula 1, Grand Prix, etc etc etc. The small one is now red, and very angry, and explodes when someone says, "we did say we should have had this up and running years ago".

The real funny bit is, the guy at Siverstone was representing a little old lady in the States, who had seen what was coming, and brought the lot up, and Mr E had to pay a very handsome sum to her to get control of them all

Apprently one doesn't ask him about it.................

[biercemountain]

Originally posted by f1steveuk
The real funny bit is, the guy at Siverstone was representing a little old lady in the States, who had seen what was coming, and brought the lot up, and Mr E had to pay a very handsome sum to her to get control of them all

Regardless of who the "victim" is, I think cybersquaters are ****.

[f1steveuk]

You can't agree with Mr E's assumption that because it's "F1", it's his??? The od lady saw what was coming, surely Bernie could have done, but no, he just thought it was "his", by devine right, sorry in this instance, i disagree............

[Ross Stonefeld]

If she saw it coming and bought it because she knew someone else would be buying it soon, that gets closer to cybersquatting. If she was running her own F1 fan site, that'd be different.

[f1steveuk]

maybe I was clear, Bernie was offered the domain names, and turned them all, because e didn't understand it, and also becaus he couldn't see why he had to buy them, he felt they were already his, so when he didn't buy them, somebody else did..........

[Ross Stonefeld]

Well let me be more clear then. Before Bernie tried to buy them, what were Formula1.com, F1.com, etc, et al being used for?

[f1steveuk]

as far as I am aware, nothing

[Gary Davies]

Well I think it's a nice story, f1steveuk!

[Bloggsworth]

Only if the vertically challenged Bernie is planning to Trade Mark the French language; sorry, that's heightist, I meant to say diminutive, or do we have to say short in these politically correct times?

Reminds me of the time Audi took Maserati to court, claiming that Quattroporte infringed its Copyright on the word Quattro; "Only if you are claiming ownership of the Italian for the number 4" the judge told them. Is Bernie going to attempt to stop the French people offering a "Big Prize" for any future competitions?

[dretceterini]

The only think trademarked or copyrighted in regard to Bernie is Grand Prick

[bira]

f1steveuk, please... why all this nonsense? You couldn't be further from the truth, really.

Nicki Morris was (still is) very much a young woman, and she wasn't (and isn't) American. She is South African and her company was (is) in England, called Purple Interactive Ltd.

Stating that nothing was done with the domains formula1.com or f1.com is untrue. Formula1.com was a hugely successful unofficial F1 website (no doubt due to its domains) for many years, and Morris and the FOM were embroiled in legal battle for years.

FOM did every possible mistake in how they handled Morris's company. Some of the FOM points were very valid - Morris held over 150 domain names, all pointing to her formula1.com website, some of which were without a shadow of a doubt unlawful (including driver names, team names, etc). Eventually matters came to a head in a San Francisco court, at which point the three banks who took over Kirch's shares in SLEC decided to put a stop to the proceedings and settled with Morris out of court.

In all, FOM spent nearly four years of battling in court with Morris over the formula1.com and f1.com domains.

Despite Ecclestone's lack of understanding of the internet, and his belief then (and, to some extent still now) that it is a commercial failure - Bernie was correct (imo) to insist that no official F1 website could or should be launched until they get hold of the formula1.com group domains. It is irrelevant that they should have bought these domains before Morris got hold of them in 1997; many, many companies were oblivious to the reality of the Net in the mid-ninties. And, as said, they then spent the next four years fighting to obtain these domains.

* * *

As for the topic: 'Grand Prix' in itself is a generic term that belongs to no one. If I now decide to stage a pie-eating contest, there's nothing to stop me from naming it the Pie Eating Grand Prix.

However, if I want to stage a motor racing contest and title it the British Grand Prix, then I am most certainly NOT using a generic term. This is extremely logical - the question is, simply, a) am I misleading the public? Yes. Within motor racing, 'The British Grand Prix' has grown to be commonly associated with the F1 event; and b) do I stand to gain from someone else's efforts? Again, yes.

So I don't think there's anything wrong with FOM or Ecclestone protecting 'Grand Prix' within that specific realm: a motor racing contest.

[RA Historian]

Thanks, Bira. You have brought some facts and sense to what was getting to be a rather contentious debate.

[f1steveuk]

Bira, I qoute from what I was told, by the mainly ex Brabham boys I worked with while I was at FOM.

"Despite Ecclestone's lack of understanding of the internet, and his belief then (and, to some extent still now) that it is a commercial failure - Bernie was correct (imo) to insist that no official F1 website could or should be launched until they get hold of the formula1.com group domains. It is irrelevant that they should have bought these domains before Morris got hold of them in 1997; many, many companies were oblivious to the reality of the Net in the mid-ninties. And, as said, they then spent the next four years fighting to obtain these domains."

If as you say "Bernie was correct (imo) to insist that no official F1 website could or should be launched until they get hold of the formula1.com group domains", why didn't he buy them when he was a] pompted to, and b] when they were cheap? I said Bernie had done nothing with the domains, when he had the chance. Regardless of if I was misinformed by those upstairs at FOM, but the bottom line is, he got his fingers burnt because he refused to listen to others who may actually have known more than him. For all that, I worked for him for 7 years, and liked him a lot.

[bira]

Originally posted by f1steveuk
Bira, I qoute from what I was told, by the mainly ex Brabham boys I worked with while I was at FOM.

"Despite Ecclestone's lack of understanding of the internet, and his belief then (and, to some extent still now) that it is a commercial failure - Bernie was correct (imo) to insist that no official F1 website could or should be launched until they get hold of the formula1.com group domains. It is irrelevant that they should have bought these domains before Morris got hold of them in 1997; many, many companies were oblivious to the reality of the Net in the mid-ninties. And, as said, they then spent the next four years fighting to obtain these domains."

If as you say "Bernie was correct (imo) to insist that no official F1 website could or should be launched until they get hold of the formula1.com group domains", why didn't he buy them when he was a] pompted to, and b] when they were cheap? I said Bernie had done nothing with the domains, when he had the chance. Regardless of if I was misinformed by those upstairs at FOM, but the bottom line is, he got his fingers burnt because he refused to listen to others who may actually have known more than him. For all that, I worked for him for 7 years, and liked him a lot.

Morris didn't want to sell the domains, it's that simple. It was only after a LOT of money was poured down the legal path, and at a point where it really did look unclear who was going to win (both sides won several battles, and the war looked wide open) - that the banks stepped in and settled for MILLIONS of dollars.

It's not like Morris offered the domains to FOM for a reasonable price (or any price) beforehand...


As a side note: I've never worked for FOM, but between the years 1998 and 2003 I was very much familiar with Ecclestone's internet viewpoint, as well as the men (and women) in FOM who were involved in the Internet activity (both legal and entrepreneurial). I will be the first to tell you that Ecclestone does not *get* the Internet at all. He never did. But some business basics apply to any medium, and as frustrating as Bernie can be, he certainly has the right view on various things - including, alas, on trade names and commercial rights.

[Bloggsworth]

As the "British Grand Prix" existed as an entity when Bernie was racing a Cooper 500, and Mercedes, Auto Union and others were winning Grand Prix before Ecclestone was even born, I fail to see how he can lay claim to the ownership of any National motor race offering a "Big Prize".

[bira]

the fact that it existed for years before Ecclestone got involved is immaterial. What is relevant is whether Ecclestone can successful prove that the common perception *today* is that the 'British Grand Prix', within the realm of motorsport, means something specific.

Surely you are not suggesting that, as common perception goes, 'British Grand Prix' in motorsport can be *anything*?

[bira]

A couple of quotes from a trademark FAQ that I think clarify the matter:

Unlike copyrights, which are available only for unique expressions of ideas, trademarks do not necessarily have to reflect similar originality. The key for a trademark is whether they differentiate particular goods or services from those offered by competitors. You cannot obtain a copyright for the word "Thunderbird", but Ford is able to maintain a trademark on that word in association with a specific model of automobile it markets under that name. Similarly, the Chrysler "diamond star" emblem might not be sufficiently original to gain copyright protection, but is is protected as a trademark in association with Chrysler automobiles. Under some circumstances, even the color of an item may be subject to trademark, as demonstrated by the trademark held by Owens-Corning for pink fiberglass insulation. A slogan or phrase may be subject to trademark protection if it is used to create a public association between a particular product with a particular manufacturer.

Common Law Trademarks: At common law, a trademark is obtained by adopting and using the trademark in association with goods or services. The mark must be placed in actual use before protection is available. Once the mark becomes associated in the mind of the public with the particular good or service, the common law trademark is established. Ordinarily, the geographic scope of the common law trademark is limited to the area of use.

(emphasis added by me)

[mctshirt]

Originally posted by bira
the fact that it existed for years before Ecclestone got involved is immaterial. What is relevant is whether Ecclestone can successful prove that the common perception *today* is that the 'British Grand Prix', within the realm of motorsport, means something specific.

Surely you are not suggesting that, as common perception goes, 'British Grand Prix' in motorsport can be *anything*?

As I understand the trademark ruling I linked to above it gets a little more complicated. Mr Ecclestone has every right to trademark Formula One British Grand Prix but cannot lay claim to British Grand Prix in relation to motor racing. Correct me if I'm wrong but the RAC were successful in laying claim to British Grand Prix and RAC British Grand Prix in relation to motorsport as long as it was not Formula One. This I believe was supported by a letter from the FIA president acknowledging ownership of the title by the RAC with no actual claim to ownership of the British Grand Prix by the FIA. Interestingly enough ownership of the British Grand Prix was claimed back again in a later letter after proceedings in this case began. Lawyers are obviously the big winner here.

Correct me if I'm wrong but according to FOM's claim to the title if Ecclestone drops the British Grand Prix from the F1 calender (a very real possibility) there can be no British Grand Prix in a lower formula.

On the point that Ecclestone has every claim to the F1 domain names is another big winner for the lawyers.

Only in the legal profession could being ignorant be labeled acceptable business practice. The F1 domain names would have been freely available before Nicki Morris purchased them so the argument "I didn't know" and "I would have bought them if I wasn't ignorant to the huge opportunity the names would afford me in the future" could only be argued at great length (and expense) by high priced teams of lawyers. I am not familiar with Nicki Morris's financial means but at a guess it doesn't match FOM in a death or glory legal battle. To say that Morris settled out of court based purely on the fact she may not have won is a presumption she could afford to sustain a long drawn out legal battle against FOM regardless of a winner.

It would not be the first time a large organisation has thrown money at lawyers until a less financial opponent has caved in nor will it be the last.

[Paul Taylor]

This is very interesting...to think that I could a millionaire right now if I'd have paid money 12 or so years ago to buy f1.com, formula1.com, formulaone.com, grandprix.com and all the variations in .co.uk...If time machines ever get invented, I know what to do!!!

[bira]

Originally posted by mctshirt

As I understand the trademark ruling I linked to above it gets a little more complicated. Mr Ecclestone has every right to trademark Formula One British Grand Prix but cannot lay claim to British Grand Prix in relation to motor racing. Correct me if I'm wrong but the RAC were successful in laying claim to British Grand Prix and RAC British Grand Prix in relation to motorsport as long as it was not Formula One. This I believe was supported by a letter from the FIA president acknowledging ownership of the title by the RAC with no actual claim to ownership of the British Grand Prix by the FIA. Interestingly enough ownership of the British Grand Prix was claimed back again in a later letter after proceedings in this case began. Lawyers are obviously the big winner here.

Correct me if I'm wrong but according to FOM's claim to the title if Ecclestone drops the British Grand Prix from the F1 calender (a very real possibility) there can be no British Grand Prix in a lower formula.

On the point that Ecclestone has every claim to the F1 domain names is another big winner for the lawyers.

Only in the legal profession could being ignorant be labeled acceptable business practice. The F1 domain names would have been freely available before Nicki Morris purchased them so the argument "I didn't know" and "I would have bought them if I wasn't ignorant to the huge opportunity the names would afford me in the future" could only be argued at great length (and expense) by high priced teams of lawyers. I am not familiar with Nicki Morris's financial means but at a guess it doesn't match FOM in a death or glory legal battle. To say that Morris settled out of court based purely on the fact she may not have won is a presumption she could afford to sustain a long drawn out legal battle against FOM regardless of a winner.

It would not be the first time a large organisation has thrown money at lawyers until a less financial opponent has caved in nor will it be the last.

Morris comes from a rather wealthy background and was probably the only website owner around the scene with the financial backing to take on FOM. But that is beside the point.

I don't actually argue on WHO should own the 'British Grand Prix' trademark - rather, I am arguing that it IS a common-law trademark. Some here have asserted that it is outrageous to even think of laying claim to Grand Prix - and that is what I am arguing against. Whether RAC or FIA or FOM should be recognised as the rightful owners, is not really something I'm learned enough to opine.

[ensign14]

Intellectual property law is complicated. You can register a trademark in different categories - so there's Apple Computers and Apple Records (and when the two got close they sued each other) - so you could have a Grand Prix Dry Cleaners if you wanted to (and if no-one else has it).

Using Grand Prix in one of the sporting categories might lack distinctiveness that is required for trademarking (A1 Grand Prix get away with it, as well as snooker events), i.e you can't register "Football Club" as a trademark cos it merely describes what it does, and there's lots of prior use issues, i.e. Mrs Beckham could not trademark "Posh" for clothes as Peterborough United had it on their t-shirts for some years beforehand. So any "old" Grand Prix could still use it even if BCE registered a tm for "Grand Prix". Which I doubt he could. Except as some sort of design right as part of a logo. In which case it's the logo that would be protected, not the wording.

[bira]

A1 Grand Prix did NOT "get away with it", and in fact the series name was changed officially to A1GP (a single word, no space) a few months ago.

[Catalina Park]

So if I am understanding this Bernie owns the name "Australian Grand Prix"
Who owns the name "New Zealand Grand Prix"?

[Ross Stonefeld]

The Kiwi motorsport federation?

[Eric McLoughlin]

There are many non motorsport events which also contain the expression "Grand Prix". I know for sure that some UK horse showjumping competitions carry this title.
There are also European music competitions whiuch hacve used the expression.

If Bernie was able to obtain any sort of proprietorial rights over the term "Grand Prix" it would probably be limited to motor racing events only.

(Has he expressed an interest in "Grosser Preis" or "Gran Premio" I wonder?)

[bira]

I don't think - though I may be wrong - that FOM has attempted to register 'Grand Prix' as a trademark, not in any context. Rather, they raise opposition to anyone attempting to use it or register it within the specific scope of a motorsport competition. The premise is that A1GP, for example, called itself A1 Grand Prix to benefit from an association by name that may lead public to believe it is somehow related or on a par with F1 Grand Prix. That is not without logic, as far as I can see, and the fact that FOM has been able to get such companies to drop the GP name suggests somewhere, somehow, they have legal arguments on their side.

[Ross Stonefeld]

I think it'd only be limited to cars. Because we currently have the British Grand Prix (on pavement) for 125cc, 250cc, and MotoGP motorcycles; and the British GP for Speedway Motorcycles.

[bira]

yeah makes sense

[ensign14]

Originally posted by bira
A1 Grand Prix did NOT "get away with it", and in fact the series name was changed officially to A1GP (a single word, no space) a few months ago.

Blimey, never noticed that. Shows how much attention I pay. Albeit that might have been to avoid a legal fight.

[Stirling]

And I imagine that whichever Hollywood studio currently holds the copyright to John Frankenheimer's 1966 opus 'Grand Prix' would be less than impressed by any attempt by Bernie to retrospectively (and currently, from DVD sales) secure royalty payments for their use of the title.......... And Hollywood's probably one of the few places which could take on Bernie's legal muscle!

ciao,
Stirling

[kayemod]

Originally posted by Stirling
....... And Hollywood's probably one of the few places which could take on Bernie's legal muscle!

ciao,
Stirling

And you can be sure that they would, we're all waiting....

The number of lawyers currently practicing in the USA, exceeds the total for the entire rest of the world. It could be yet another urban myth, but I read that in The Times quite recently.

[Arjan de Roos]

Originally posted by Eric McLoughlin
There are many non motorsport events which also contain the expression "Grand Prix". I know for sure that some UK horse ....

I read on a site somewhere that there even was The British Pie Eating Grand Prix...

[f1steveuk]

http://www.pitpass.c...es_art_id=31280

Much as we have discussed!!!