Group Lotus to Tony Fernades: Cease and Desist

akmuq
Well done, you've predicted the past.:dopey:
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Go back and re-read my post - Fernandes is doing this in stages rather than all at once so as to make it look like this is his idea and part of a grand plan rather than a sudden backflip.

akmuq
If he cared about image and all that he would have bought out Brawn GP or some other title contender.
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That's not the kind of image I'm talking about.
 
Apparently its a Group Lotus win, but TF keeps the TEAM Lotus name.

In other words, everything stays the same.


Group Lotus: http://www.lotuscars.com/news/en/naming-dispute
TF on Tiwtter: We won. I'm over the moon. Team lotus belongs to us. Our chasis name stays lotus. No one can use the chasis name. We are the only lotus. Team lotus.
Well done to everyone at team lotus and thank you to all our fans for supporting us. The good do always win. Judgement was just given by Justice Smith a few mins ago.
 
And it seems like Group Lotus is going to appeal still about the naming rights. I don't understand what is so wrong with Group Lotus. Sarah Price, head of legal at Group Lotus is said to be worried about the sport and brand image yet she or they're just causing a whole lot more confusion into this matter. They're dragging this everywhere!
 
Well, the best outcome was always going to have one side declared to be Lotus and the other forced to change their name. The funny thing is that Group Lotus' statement about launching an appeal because they believe there should only be one team stands out because that's what their entire thing about the breach of contract was about: they wanted nothing more to do with Fernandes, but believed that if he ran a team as Team Lotus, there would be an implied connection between the two teams. So it really feels like half a verdict.
 
Judgment
206 If it has no such rights then GL clearly has goodwill attached to the word "Lotus" that is attached to its business and its business activities. It has not directly entered into F1 racing at all before this season. Nevertheless such a finding would be on the basis that TLL and TLIL's use was on their behalf and 1MRT's activity last year was also on its behalf and part of the GL business activities which creates goodwill which it is entitled to protect. The fact that GL's primary market is people who might buy sports cars and Team Lotus' activity is exclusively racing in F1 is irrelevant for these purposes. GL has the business of the sale of sports cars. Nobody disagrees with the proposition that that business would be enhanced by being associated with a successful racing car. It seems therefore to me that if GL has the exclusive rights to the word "Lotus" even if it is entering into F1 only for the first time this year it does not matter. As part of that activity it is entitled to stop the Defendants using Team Lotus if to do so would be an infringement of its trade marks and passing off its business.

207 The question therefore currently being considered is whether or not the Defendants can escape that infringement by suggesting there is no confusion or similarity in GL racing in F1 under a name including the word "Lotus" and the Defendants racing in F1 under the name "Team Lotus".

217 On the BBC website Team Lotus is correctly identified. GL's association with Renault is not noted at all. This is because of course the car is Renault built. GL as I understand it is not manufacturing anything in respect of the car which it seeks to be associated with. This rather undermines its' own evidence and the attempt to extract something out of Mr Mosley's answer above. The website gives a title to the name Lotus Renault but when one clicks on that it is a reference to Team Lotus F1 and Mr Fernandes. Despite all of these matters nobody appears to be confused as to which car is which when it is on the grid.

245 I cannot see that GL can simply put a racing car on an F1 track for the first time and then shout "confusion" when there has been none before.

249 I therefore conclude that as a matter of fact even if GL had the exclusive right to Lotus and the trade mark in the Roundel that it has there is no realistic possibility of confusion if TLVL or anyone authorised by it competes in F1 alone racing cars as opposed to building and selling sports cars. I have already commented on the paucity of the evidence above. The evidence does not to my mind provide me with a clear picture so I am left to deal with it ultimately on the basis of my opinion. In my opinion there is no likelihood of deception in this case where the activities of TLL and its successors are limited to F1 racing.

270 Finally it is submitted that if the existing registrations are revoked neither party has an existing registered "Team Lotus" mark. However it is submitted that the Defendants on this basis still have some goodwill in the words Team Lotus and the Roundel and it can use them and GL cannot prevent that. Thus it is submitted it is entitled to have its mark registered under the TMA 1994. Once that happens it will then be provided with a fresh statutory defence based on those new marks and the Claimants' action for infringement be stayed until those registrations take effect. Both parties have in 2010 made applications for registration of the Team Lotus mark. It is submitted that GL has no grounds for opposing the registration of the mark on the part of the Defendants. Any grounds for objection are those set out in section 5 TMA 1994 and given the findings that there is no likelihood of confusion and the fact that the Defendants have goodwill attached to it there can be no grounds for objecting to the registration. By contrast it is submitted that GL has no right to register its marks under the name Team Lotus. Section 5 (4) TMA 1994 prohibits the registration if its use is liable to be prevented by virtue of any rule of law (in particular the law of passing off) protecting an unregistered trade mark or other sign (section 5 (4) (a) or by virtue of an earlier right (ibid sub-section (b)). GL fails to satisfy any of those criteria. Further it is clear that it gave up any rights to that name by virtue of the 1985 Agreement and has acted consistently during the currency of the Agreement and afterwards (see above) on the basis that it had no rights to the name Team Lotus. Thus it is submitted that the Defendants' new registrations will afford them a defence because they will then have registered trade marks.

271 That seems to me to be correct.

280 therefore reject GL's contention that the goodwill associated with the name and the Roundel has been abandoned by non use. That goodwill in my view is substantial as the evidence shows. Even if it were minimal it does not require much for there to be some residual goodwill (although it is a question of fact in each case) see Sutherland v V2 Music Ltd [2002] EWHC 14. However I must stress that in my view on the evidence that has been produced there is substantial goodwill attached to Team Lotus and the Roundel despite non racing for 15 years and it is vested in TLVL.

284 Last year 1MRT raced under the License with cars painted in the traditional Lotus colours of green and yellow. However in December 2010 GL announced that it had bought an equity stake in Renault F1 and would be racing as Lotus Renault GP and using the JPS livery. ... Nevertheless I can see no goodwill clearly established on the part of TLL and then TLIL to be passed on to TLVL. Such a limited arrangement ended in 1986. It is far too late in my view to begin to assert any rights to that colour. It is in my view "up for grabs" and GL have simply beaten them. Of course (subject presumably to F1 regulations) there is correspondingly nothing to prevent 1MRT racing under the same colours but I do not suppose that is contemplated for one minute.

385 The Defendants in paragraphs 134 A-E of their Counterclaim sought a transfer of the domain name "TeamLotus.com" which was registered by the Claimants in 2010. This part of the issues did not feature in any opening and only emerged in section N2 (paragraph 234) of the Defendants' closing. No evidence was led as to this and the matter was not explored at the trial. It seems to me that the Defendants have failed to establish a properly pleaded case for an infringement of their right and have not effectively proceeded with it at trial. I will therefore dismiss that claim.

387 It is unfortunate in my view that this case came before the courts and was incapable of resolution beforehand. However if the parties cannot agree to resolve a dispute that is why the courts are here. At the end of the day I cannot help feeling that nevertheless the parties are better competing against each other on the F1 racetrack. Equally I cannot help avoiding the feeling that F1 followers would actually find that enhances F1 and they would be interested to see which of the two Lotus cars was more successful and which then might possibly be better placed to claim to be successors to the Colin Chapman mantle.
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Basically both teams have operated with their versions of the Lotus name and the judgement finds no likelihood of confusion between the two.

Team Lotus have lost the original use of their trademarks while retaining the right to use the Team Lotus name. They CAN use their trademark as applied for in 2010 due to the 'goodwill' that they own with the Team Lotus name.

Group Lotus retain the right to use the trademarks as they were associated with the road-car division BEFORE the racing division.

'JPS' alibi colours are NOT the property of Team Lotus by implication, goodwill or otherwise and do not need to be changed.

Team Lotus did not succesfully submit their application for use of TeamLotus.com and lose that right. I'm sure that's what it says... but seems odd somehow.

EDIT: Group Lotus to 'seek clarification' via appeal. Quelle surprise :D
 
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Well, the best outcome was always going to have one side declared to be Lotus and the other forced to change their name.
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Er, why? The best outcome is the current one - where Lotus Cars stick around to help fund the Renault team and Team Lotus gets to keep their FOM money and stick around.
I would hate to see either team struggle due to this silly mess (either Renault struggling for cash if Lotus Cars left or Team Lotus struggling after losing the TV money).
 
Because having two Lotuses (Lotii?) on the grid could be confusing. The hardcore fans know the difference, but the casual viewers shouldn't have to wade through a mass of lawsuits and name-calling just to understand who is who.
 
Team Lotus certainly did the right thing pushing ahead with their use of the name... the tone of the judgement suggests that if they'd let the name sink into obscurity it could well have stayed there.

The Judge was quite clear though; F1 fans (who both teams cited in application) would be aware of the history of Lotus AND of the legal wranglings and should therefore be able to know the differences.

It's probably the right decisions - I was struggling to see who had the greatest right in this case.
 
TenEightyOne
F1 fans (who both teams cited in application) would be aware of the history of Lotus AND of the legal wranglings and should therefore be able to know the differences.
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What about newcomers who joined the sport this year and only had a passing interest in the sport?
 
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Because having two Lotuses (Lotii?) on the grid could be confusing. The hardcore fans know the difference, but the casual viewers shouldn't have to wade through a mass of lawsuits and name-calling just to understand who is who.
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Fortunately I've never had to explain the difference between the Lotus teams, although I did have to explain Toro Rosso and Red Bull a few times. At least the Lotus teams have different enough liveries to easily distinguish them as two teams.

Still, it's better than having to explain the grooved tires from a few years ago. "Y NO SLICKS?" :lol:
 
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What about newcomers who joined the sport this year and only had a passing interest in the sport?
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That's a good point, but it wasn't part of the submission from either side and therefore couldn't be considered in judgement.

Both sides relied on F1 historical knowledge on the part of 'observers'. Please note that the part you quoted was from the Judge's summary, not from my own opinion :)
 
Well, there is a second, bigger problem:

When Group Lotus terminated the licencing agreement with Fernandes, it was because they felt Fernandes had mis-used their name. The judge's statement is a little bit vague, but the implication is that he has agreed with them on this, and that they had grounds to terminate the contract. Although it has been legally declared that there is a distinction between Group and Team, it doesn't address the fact that both teams are competing under almst identical names. The fans having the knowledge to distinguish between the two teams is one thing, but Fernandes using a name almost identical to one that he was told he could no longer use is another issue entirely.
 
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Because having two Lotuses (Lotii?) on the grid could be confusing. The hardcore fans know the difference, but the casual viewers shouldn't have to wade through a mass of lawsuits and name-calling just to understand who is who.
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People don't get confused with Manchester United and Manchester City. :P The Judge made this point - the fans know the difference, the sponsors know the difference, so the problem isn't that big. The potential marketing gains are still huge for both teams.
 
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What about newcomers who joined the sport this year and only had a passing interest in the sport?
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On the BBC coverage at least, everyone seems to refer to Renault Lotus as Renault and Team Lotus as Lotus. There hasn't been much, if any confusion with newcomers I've spoken to.
 
Dijital Majik
On the BBC coverage at least, everyone seems to refer to Renault Lotus as Renault and Team Lotus as Lotus. There hasn't been much, if any confusion with newcomers I've spoken to.
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Not just BBC though, it's been like that to almost all the commentators around the world including ESPNStar's. Also when the race results being handed out after each race, LRGP is still registered as Renault while Team Lotus registered as Lotus Renault. There seriously shouldn't be any much of a confusion honestly...
 
Plus people don't seem to get confused with the "-Renault" engine tag, just like McLaren-Mercedes and Mercedes or Sauber-Ferrari and Ferrari.
 
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Although it has been legally declared that there is a distinction between Group and Team, it doesn't address the fact that both teams are competing under almst identical names.
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It does address that and it does so in detail

Judgement
244 My conclusion is in my judgment supported by what actually happened. The parties by the 1985 Agreement regularised the existing situation which as I have set out above meant that there was separate and divisible goodwill in GL and TLL/TLIL. I cannot accept that that decision and acknowledgment by the parties and their experienced lawyers and trade mark agents at the time was factually wrong. Further that must therefore be on the basis that the parties acknowledged that the trade mark registrations which came out of the 1985 Agreement would not be confusingly similar as regards the other party's trade marks. Equally the parties have entered into the agreement on the basis that each has an existing goodwill which is clearly dovetailed to the trade mark registrations and the division between sports cars and racing cars. Thus the parties clearly believed at that time that the carrying on of the activities by the respective parties would not amount to a passing off of the other side's business as there was no confusion in the minds of the public.

252 For this section to be relied upon the registered trade mark must have a reputation in the United Kingdom. I accept the Claimants' submission that "Lotus" has such a reputation. However the reputation is in relation to sports cars; it is not in relation to F1. Once again in my view this is the fundamental difficulty for the Claimants. I do not believe GL has a reputation in F1; it has a reputation for manufacturing and sale of sports cars. The requirement is for TLL and its successors either taking unfair advantage of the distinctive character or repute of the earlier trade mark or their actions in relation to the goods or services would be detrimental to the distinctive character or repute of the earlier trade mark. Confusion is not apparently necessary. Detriment to and unfair advantage of distinctive character or repute must be probable by real as opposed to theoretical evidence and cannot merely be assumed from the fact that the earlier mark has a substantial reputation: Mastercard International v Hitachi Credit [2005] ETMR 10. In my view there is no evidence to suggest that TLL and its successors will either take an unfair advantage of the distinctive character or repute of the earlier mark or their conduct will be detrimental to its distinctive character or repute. First once again there is the fact that they are not seeking to sell goods that compete with GL. It is solely concerned with the manufacture and racing of F1 cars, an activity which GL has not participated in directly ever. Second even if GL could pray in aid the earlier racing history as being on its behalf that has not actually occurred since 1994. I remind myself of what Mr Florance said that he could not explain why if this was so important that GL had not entered F1 between 1994 and 2010. What TLL and its successors want to do is simply race in F1 under the name Team Lotus. I do not see how that takes unfair advantage or is detrimental to GL in its primary business that of the manufacture and sale of sports cars. In my view therefore the claim under this head similarly fails.
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The fans having the knowledge to distinguish between the two teams is one thing, but Fernandes using a name almost identical to one that he was told he could no longer use is another issue entirely.
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Fernandes was told he couldn't use the name by Group Lotus, not by a court... that was (as you know) the reason for both parties seeking judgement. The original contractual termination refers to use by TL of the logo on merchandised sports bags.

It's well worth reading the judgement in its entirety. There are several confusing sections due to there being three Lotus teams in the equation (not just the two F1 teams)... in my view the Judge has found a balanced solution to the problem, namely that the ipso facto situation that exists is actually the natural and legal conclusion to the affair.
 
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TenEightyOne
Fernandes was told he couldn't use the name by Group Lotus
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And the ruling supports that. The "Lotus" name Fernandes used in 2010 was issued under licence by Group Lotus. It was technically Lotus Cars that had the naming rights to that team. Group Lotus stopped Fernandes from using that name - and by agreeing that Group Lotus were well within their rights to do so, the court supports them.
 
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And the ruling supports that. The "Lotus" name Fernandes used in 2010 was issued under licence by Group Lotus. It was technically Lotus Cars that had the naming rights to that team. Group Lotus stopped Fernandes from using that name - and by agreeing that Group Lotus were well within their rights to do so, the court supports them.
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We're going around the houses somewhat... but the ultimate judgement is that Team Lotus have the right to continue to use the name independently of any pre-existing arrangement that may or may not have occured with either Classic Team Lotus or Group Lotus.

The sub-section that finds against Team Lotus is specifically in the context of a GL agreement. The judgement finds that the grounds for GL to make such an agreement were limited beyond GL's own original beliefs.

The Judge finds each party to be correct in a certain number of their respective arguments and incorrect in others. The bottom line in terms of naming rights is that Team Lotus may continue to use their full name. Group Lotus may not.
 
Ardius are Sauber just Sauber-Ferrari or are they still BMW Sauber-Ferrari, sorry thats a bit off topic but I did find it funny after BMW withdrew from the sport :P
 
lmanion
Ardius are Sauber just Sauber-Ferrari or are they still BMW Sauber-Ferrari, sorry thats a bit off topic but I did find it funny after BMW withdrew from the sport :P
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They are now just Sauber-Ferrari. The only reason they kept the BMW naming was that Peter Sauber didn't file a name change request in time.
 
And also BMW did help fund Sauber's 2010 season, hence the lack of sponsorship that year (same as Brawn and Honda). So perhaps Peter was willing to leave it on anyway as a sign of good will (or he just didn't care that much).
 
I have no confusion at all with this matter. So what Dany Bahar doing now is going to do more and even more damage to Lotus Cars and probably scratching the shiny surface of Caterham Cars...
 

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