After a four-year-long legal jawing match, a highly controversial case involving the ABB FIA Formula E championship has been lodged to the European Court of Justice. As first uncovered by German ‘e-Formel.de’, Formula E’s governing body FIA has been involved in an intricate trademark opposition case against the British “The Green Effort Limited” company. Both are currently fighting over the rightful ownership of the “Formula E” trademark.

According to the report, The Green Effort has held exclusive ownership rights to the “Formula E” trademark since 2011, using it to organise an international electric karting championship. The championship’s events are being held on circuits in the Netherlands, Belgium, Germany and Poland.

In 2013, two years later, the FIA registered the similarly-named “FIA Formula E Championship” with the European Intellectual Property Office (EUIPO).

Documents show the FIA suing the 2011 trademark proprietor on grounds of invalidity and revocation soon after. While the invalidity claim was rejected by the EUIPO early in the proceedings, it continued to investigate the revocation assertion for multiple months, eventually deciding against The Green Effort. This triggered a process of deleting the “Formula E” trademark from the EUIPO registry.

As a result, the FIA could have obtained the trademark itself, essentially opening up the possibility to carry out Formula E races without the addition of “FIA” in its name.

Appeal for appeal…

However, The Green Effort objected the decision, taking the case to multiple levels of appeal courts.

Court documents show the company’s legal representative, the “Primus Ominum Consultant & Management Company” (POCM), filing proof of the active use of Green Effort’s Formula E trademark only a handful of minutes after the expiry of the three-month deadline, thus leading to the judges’ decision not to accept the evidence and to rule against The Green Effort.

Had the proof been filed earlier, it is believed that the London-based company could have continued being the sole proprietor of the trademark.

Instead, the decision kick-started a lengthy objection procedure by The Green Effort. After being evaluated by multiple appeal courts across Europe, the case has now even reached the European Court of Justice (ECJ) in Luxemburg, where the case has been lodged in March and is awaiting a final decision since 25 April 2018.

The Green Effort argues that they were treated unfairly by the EUIPO decision chamber with regards to the time limit to submit the evidence. Should a European judge decide on revoking all previous objects and accept POCM’s evidence, the EUIPO could be forced to restart its investigation.

Not a coincidence?

POCM’s desperate attempt to defend The Green Effort’s trademark hardly comes as a surprise. After all, POCM not only used to act as The Green Effort’s legal representative but is also listed in an active “Secretary” role at the Green Effort by the UK Companies House. Both endeavours also share the same address and senior employees.

A third firm, the “Primus Omnium Argutiae Limited” (in English: “foremost subtlety”), also seems to play a significant role in the trademark kerfuffle. The now struck-off company shared not only a similar name to POCM but also used to employ the same senior officers that are currently active in The Green Effort and POCM.

More interestingly, the EUIPO still lists Primus Omnium Argutiae Limited as the owner of the “Formula Hybrid”, “e Rallye” and “E Tank” trademarks. One employee, thought to be a landscape architect from Hamburg, Germany, also owns the “Formula E -lectric” trademark.

It is unclear whether the alleged hoarding of these trademarks could influence the ECJ decision. With the final ruling still pending and the court playing their cards close to their chest, it is difficult for outsiders to gauge the outcome of the proceedings.

A final statement by the European judge is expected to be shared in the coming weeks.

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