Pole position for ACO in Le Mans trade mark infringement claim

In Automobile Club de L’Ouest (ACO) (a non-profit organisation subsisting under the laws of France) v Omologato Ltd and another, the Intellectual Property and Enterprise Court found that Automobile Club de L’Ouest (ACO), organiser of the famous 24 Hours of Le Mans endurance motor race, had successfully established trade mark infringement against Omologato Ltd and its director, Mr Shami Kalra.

ACO owned registered trade marks for LM, LE MANS and 24H LE MANS covering watches, organisation of motor vehicle competitions and entertainment in motor racing. Omologato used the signs LE MANS, LM and LMR in connection with the marketing and sale of watches. Following receipt of a cease-and-desist letter, Mr Kalra also sought to register LMR as a trade mark privately.

The Defendants argued that the LE MANS brand was not well known in the UK. The Court rejected this argument, finding that the brand enjoys a significant reputation in the UK, supported by the races enduring popularity, substantial UK attendance figures and extensive media coverage.

The Court held that Omologato’s use of LM infringed ACO’s registered LM mark, while its use of LE MANS created a likelihood of confusion with ACO’s LE MANS registrations. The Court also found that use of LMR infringed ACO’s earlier LM mark, particularly when viewed in the context of Omologato’s motorsport-themed branding and references to the Le Mans race.

ACO additionally succeeded under section 10(3) of the Trade Marks Act 1994. The Court considered Omologato’s conduct to be a classic case of free-riding, with the company seeking to benefit from the prestige and reputation associated with the Le Mans race without authorisation.

Importantly, the Court held that Mr Kalra was jointly liable for the infringements due to his central role in naming, marketing and promoting the watches. It also ordered the invalidation of his LMR registration on the basis that it conflicted with ACO’s earlier rights.

Key takeaway

The decision is a useful reminder that businesses seeking to associate products with well-known sporting events face significant trade mark risks. Minor modifications to branding may not avoid infringement where consumers are likely to perceive a connection with the underlying event, and directors who actively direct an infringing strategy may face personal liability alongside their companies.