Group Lotus had provided more details of today’s judgement, undelining the fact that it has won on several points and can continue to use the name – without ‘Team’ in front of it – in F1.
This is what Group Lotus says:
Mr Justice Peter Smith today gave his judgement in the dispute between Group Lotus plc and Team Lotus, Tony Fernandes and others in respect of the right to use the name “Lotus” in Formula 1.
Judgement Summary
- Group Lotus has the right to use the name “Lotus” on its own within Formula 1
- Group Lotus entitled to race in the historic black and gold livery
- 1Malaysia Racing Team (1MRT) ruled to be in breach of licence agreement, Group Lotus awarded damages
- Team Lotus Ventures Limited trademarks revoked for non-use
- Group Lotus trade marks unaffected
- Group Lotus has the right to use the Lotus marque on cars for road use
The Judge found that:
Group Lotus has goodwill associated with the name “Lotus” in Formula 1 and is free to compete in the sport under that name using the Lotus roundel;
Group Lotus is entitled to race in F1 using the historic black and gold livery;
1MRT is in breach of the Licence granted to them by Group Lotus to race in F1 under the name Lotus Racing and has awarded Group Lotus damages in respect of that breach;
Team Lotus Ventures Limited’s trade mark registrations in the name of Team Lotus are cancelled as a result of non-use;
Group Lotus trade mark registrations are unaffected; and
Group Lotus has the right to use the Lotus marque on cars for road use.
The Judge also found that Team Lotus has the right to continue to race in Formula 1 under the name Team Lotus but the effect of the Judgment is that only Group Lotus can use the name “Lotus” on its own in F1. Group Lotus is concerned that this aspect of the Judgment will cause confusion in the eyes of spectators and the wider public. Accordingly, Group Lotus is seeking leave to appeal so that the right to use the Lotus brand in Formula 1 is clarified once and for all in the interests of the sport and the fans. Group Lotus and its shareholder Proton Holding Bhd are confident of success on appeal.
Speaking after the judgement, Sarah Price, Head of Legal, Group Lotus plc said: “Group Lotus is pleased that its right to race under the Lotus name in F1 has been upheld and that the Defendants’ attempts to stop that have failed.
“The on-going dispute with Team Lotus and associated companies has been a cause for concern for all at Group Lotus. Despite the detailed judgment there are issues which still require clarification and we remain committed to obtaining this much needed clarity for the many fans of the Lotus marque – we are extremely grateful for their continued support. The decision to appeal has not been taken lightly.”
Adam Cooper F1 
so Fernandes has right to name his chasis as Team Lotus but no Lotus. He cant claim that they are Lotus because they are Team Lotus and Group Lotus has right to name chasis as Lotus. Group Lotus is the real Lotus, Fernandes is just a Team Lotus.
Two questions come to mind:
If Team Lotus obtained their name from Team Lotus Ventures Limited’s trade mark registration, then how can 1Malaysia use it if it’s been cancelled? David Hunt sat on, apparently, nothing for 15 years and owes Tony some cash.
If 1Malaysia have a chassis called “Lotus”, but it can’t be referred to as “Lotus” on it’s own, what’s it really called?
Congratulations to Team Air Asia for Davide Valsechi’s GP2 win, but it’s the only win they’ll be celebrating today no matter how they try to spin the judgement.
Group Lotus went to court first and foremost to try to prevent Tony Fernandes from using the Team Lotus name and to force him to change to 1Malaysia Racing or some other non Lotusy name.
They didn’t do that. The rest is semantics.
Now watching them try to spin this into a win really is rather amusing 🙂
the judgement doesn’t really make sense. Group Lotus still can use name “Lotus” and black and gold livery, and Team Lotus can use TL name in the racing, but TL has breached the licence given from GL.
So can Team Lotus use Lotus logo on their cars for starters?
and what does this judgement mean in the end, because it’s somehow wierd to see that both parties are celebrating…
they breached the “Lotus Racing” license from 2010.
They can only use the “Team Lotus” roundel, not the “Lotus” one. if you look closely, they have different lettering.
Just a few thoughts that popped into my head.
How many of the points that Group Lotus say they have won were actually being disputed by 1Malaysia Racing?
What is the amount of the award of damages?
Surely the side that reserves the right to appeal is usually the ‘losing’ side?
Aren’t Group Lotus risking losing the right to use the word ‘Lotus’ in F1 completely by challenging the ‘confusion’ of both companies using it since 1Malaysia have unequivacally been given the right to use Team Lotus?
xL
I’m a lil confused here.
It sounds like Group Lotus won everything but the judge let Tony keep the entry name of Team Lotus???
I mean, if “Team Lotus Ventures Limited trademarks revoked for non-use” means what I think it means, then just what apart from a name did Tony buy from that Hunt guy? And if the trademarks are no good, how can the name still be?
Also, if name changes are a no no and “Team Lotus” gained their entry last year under just plain “Lotus” and only Group Lotus can use just plain “Lotus”, could Group force a change in Team Tony’s name and screw him out of his F1 prize $$$?
I always thougt Tony was just trying to be a PITA of Group so that they would pay him to go away. Sometimes when you mess with the bull, you get the hornes…
Paragraph 270 of the judgement should clear this up.
The trademarks held by Team Lotus Ventures Limited (David Hunt) have been revoked because Fernandes and co did not call David Hunt as a witness to prove good reasons for ‘non-use’ of the Team Lotus name between the period of 2003 and 2008. Trademarks can be cancelled if there is no good reason for non-use over a period of five years or more.
The trademarks previously held by Hunt have been revoked, however, both 1Malaysia and Group Lotus applied for new trademarks of the ‘Team Lotus’ name last year.
The judge found that Group Lotus had no right to the Team Lotus name following an agreement in 1985 and also had no right to block Fernandes’ and 1Malaysia’s registration of ‘Team Lotus’ as a trademark.
So basically, although the trademarks for ‘Team Lotus’ in F1 advertising previously held by Hunt have been revoked, the judge has found in favour of Fernandes and against Group Lotus in terms of their respective right to the registration of a new ‘Team Lotus’ trademark applied for in 2010.
I’ve just read a large part of the judgement and the ‘right to use’ arguments have been won due to a principle called ‘goodwill’. (See http://www.bailii.org/ew/cases/EWHC/Ch/2011/1366.html#para265)
See paragraph 280: “I therefore reject GL’s contention that the goodwill associated with the name and the Roundel has been abandoned by non use.” and “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”
In conclusion paragraph 286 states: “The goodwill associated with Team Lotus and the Roundel has devolved to TLVL. The marks however in my view ought to be revoked for non use between 2003 and 2008 but the goodwill remains and is still protectable. ”
Through the same principle of ‘goodwill’, 1Malaysia’s counterclaim to prevent Group Lotus from entering F1 under the name ‘Lotus’ also fails so the status quo basically remains. See para 288: “Accordingly save in respect of the revocation proceedings the Claimants’ claim fails. Equally the Defendants’ counterclaim fails in its entirety. ”
Interestingly, Group Lotus’ own clarification in it’s Lotus Racing agreement with 1Malaysia, that 1Malaysia couldn’t use ‘Team Lotus’ because it didn’t belong to Group Lotus back fired against them. See paragraph 278: “GL clearly acknowledged in the License Agreement that it should not license 1MRT to race under the name Team Lotus. That could only be because it was concerned that TLVL would assert that was an infringement of its rights and a passing off claim. ”
So although TLVL is no longer a legal commercial entity, Team Lotus has clarified it’s legal status and 1Malaysia?Tony Fernandes can own the Team Lotus trademarls and run as it is and the same for Group Lotus and ‘Lotus’!
Regarding the enfringement of the Lotus Racing agreement, Group Lotus won this part of the suit but can claim against Merchandising income only. I’m guessing the amount to be claimed will be addressed in a separate hearing.
I may be wrong in this assessment but the wording of the judgement also suggests that Group Lotus’ will have difficulty in winning a ‘confusion’ suit over both companies using the name. See again paragraph 278: “I am entitled also to take into account the accepted distinctiveness of the words Team Lotus and its Roundel as acknowledged by the parties over the years following the 1985 Agreement” In other words, the judgement confirmed that Lotus and Team Lotus are not confusing and can co-exist in a commercial sense.
The funniest part is Mr Justice Peter Smith’s summing up:
“OVERALL OBSERVATIONS
“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.”
Right on!
xL
LOLOL just read the paragraph about the black and gold colour scheme (283). Basically the judge says that the colour scheme was brought in to promote John Player cigarettes and that no one has ever asserted any other rights to it, that he can’t see JP disputing what is basically free advertising and that TL can also use the colour scheme if they want but that Renault just got there before them!
“Group Lotus also retains right to use name in F1”
That’s a cheery spin on it!
One final thought. I understand that both teams are trying to win the hearts and minds of Lotus/Team Lotus fans of old – failing in many instances because many of those fans don’t recognise either organisation as the ‘custodian’ of their beloved marque BUT who’s fighting for the hearts and minds of long standing Renault fans? If I had been Renault fan, I’d be mightily fed up by now! (Although less so than a Benetton or Tolman fan 😉 )
xL
We pretty much don’t care. If Bahar has money and wants to give it to our team , go on. Where does he take it from and what sticker he’s going to put on R31 and its successors – we don’t care. It’s pretty much exactly what Kubica said – Lotus is a sponsor, he may as well be driving for Total, no difference whatsoever.
What we don’t like is creating a climate of a holy war against our team and we view Fernandes, Gascoyne and some of their supporters (not all of them!) as lunatics.
We just want to race, we are much more concerned with Robert Kubica’s return, Petrov’s growth as a driver etc. then some childish rants of two groups of Malaysians fighting over a once glorious marque, just to squeeze money from it. The “Lotus” word on the car doesn’t make it quicker.