As an avid motorsport fan, it seemed fitting to do an examination of the trademark and patent law that subsists within the racing sphere. In any one category, there is enough information to fill a full course; thus, I’ve focused on some of the most recent events and developments, particularly within Formula One.
PATENTS
It takes very little research to discover that Formula One does not allow for the patenting of race technology – which may come as a surprise. It’s easy to assume that having 10 teams who are constantly seeking to gain even the slightest competitive advantage would result in a perpetual patent war over proprietary inventions and technological improvements. Based on what we learned this semester, this actual set-up seems anti-intuitive; if patents are meant to incentivize innovation and advance research and development,[1] why would the pinnacle of motorsports prohibit the patenting of technology where teams are constantly working to get ahead?
In short, Formula One’s standpoint against patenting results from a joint effort between the sport’s governing body, the Fédération Internationale de l’Automobile (FIA), and the teams themselves. It arises both out of necessity (if one team patents certain technology that others can’t use, how can they race?) and practicality (as illustrated below, the patent system fundamentally does not mesh with Formula One). Overall, rejecting patent protection allows the racing series to maintain its unpredictability, its rapid pace of development, and overall spectacle for viewers.
Prohibitions
An example of a firm prohibition against patenting comes from the upcoming 2026 Formula 1 Power Unit Technical Regulations, where a prospective fuel or engine supplier must agree “not to assert any rights or claims with regard to patents, pending patent applications, or any licensed rights in respect of patents or patent applications” against the FIA or other competing manufacturers in the series.[2] While the regulations do not prohibit patenting on all components of a vehicle, a Senior F1 Technician was quoted explaining the softer law that is also at play: “…if a team takes out a patent on a design, that then locks in an advantage the other teams cannot access. Therefore, the other teams will simply vote it out through the FIA Technical Working Group process by the end of the season in question.”[3] Altogether, the sentiment appears to be that a team cannot obtain technological protections through patents.
With a closer look at the patent regime as under Canadian law and the requirements to obtain a patent, there are many reasons why, notwithstanding the risk of the technology being banned, it does not make sense to pursue a patent in Formula One.
For one, teams are in a constant state of modifying their machinery; in Canada, where it can take about 6.5 years to obtain a patent from the date of filing, the subject technology may be obscure by the time a patent is granted.[4] Additionally, technological evolution is often mandated through the yearly updated in the FIA Sporting Regulations[5] and FIA Technical Regulations[6] – it leaves little incentive for teams to pursue patent applications, especially if the regulations cause major disruptions in the development process.[7] Another deterrent for a Formula One competitor is the global nature of the racing series. To enforce the monopoly afforded by a patent, a team would need to register that patent in every country that hosts a race – in 2024, that would be 21 separate filings each time a patent is sought.[8] The reality the teams are facing constant public disclosure is another hurdle – both because they would need to reveal the details of their information to obtain a patent and because their technology may be exposed soon as it is being tested (by photographers or broadcasting), thus making meeting the timelines required to file a patent unable to be met.
The Solution!
Keeping proprietary technology and innovations as a trade secret is by far the more workable method of protection, and the one that teams pursue. A trade secret means that a team is not required to publicly disclose the intricate details of their technology to competitors in a patent application. This is a clear advantage, as it prevents competitors from being able to invest their research and development efforts toward improving the patentee’s technology or adopt it themselves if the patent is not granted.[9] It allows teams to maintain their own competitive edge and facilitates the thrill of the sport through a sense of mystery.
There is no statutory protection over trade secrets in Canada, but instead they are protected through the common law or civil law in Quebec.[10] Other countries in which Formula One operates may be different. Generally, it requires that the information (1) has commercial value, (2) is kept secret among a restricted group of people, and (3) has been subject to reasonable measures to safeguard it as a secret.[11] The FIA also imposes its own safeguards on trade secrets. Under the Technical Regulations, reverse engineering a competitor’s vehicle components that are designed, manufactured, and whose intellectual property is owned by that competitor, is prohibited.[12] It is only permissible to be influenced by competitors based on information obtained at competitions or tests. Competitors are further prohibited from sharing or receiving any information about components, including improvement methodologies.[13]
The Solution?
Relying on trade secrets comes with a very substantial drawback: if a secret is leaked or discovered, the information is available to the public and to competitors with little recourse. One of the biggest incidents of cheating and largest resulting fines in the sport’s history came from an espionage scandal, dubbed “Spygate”, where confidential information was stolen and used by a competitor. Nigel Stepney of Ferrari stole what is believed to be almost 800 pages of confidential technical information about the 2007 Ferrari car and provided it to Mike Coughlan, the Chief Designer of McLaren.[14] Upon discovery, the FIA found that McLaren had been in possession of the secret documents but found no evidence any design elements were incorporated into the car design; it resulted in the disqualification of McLaren from the 2007 Constructors’ Championship (with hundreds of millions of dollars up for grabs) and fined an additional $100 million.[15]
Unlike with patents, trade secrets only grant the information-holder a monopoly as long as the information remains secret (which is always a risk) – but as was shown with the Spygate case, stealing information can come with exorbitant costs to the guilty party. Unfortunately, though, once the information is known, it cannot be unknown; despite the situation in Spygate being clearly discovered as an employee stealing documents, should the case be less obvious and result in engineering or reverse-engineering of certain technology, the aggrieved party would need to prove that the information was gathered through misappropriation. It may not be an easy endeavor.
TRADEMARKS: CURRENT EVENTS
There are layers of trademarked content in motorsport; from the series name (e.g. IndyCar[16]), the team names and their logos (e.g. Andretti[17]), the race tracks (e.g. Barber Motorsports Park[18]), or the races themselves (e.g. Grand Prix du Canada[19]). However, trademarks in motorsport extend beyond team or series branding and reach into slogans – an area in which Formula 1 has gotten into hot water with the American IndyCar Series recently.
Speaking of Spectacle…
When you hear “the greatest spectacle in racing,” you should think of the Indianapolis Motor Speedway (and likely the iconic Indy 500 race that has been hosted there for over 100 years). However, the trademarked slogan from 1986 has become a potentially contentious issue between IMS and Formula One this past year.[20]
The first incident occurred in March, 2023 through an online advertisement touting the inaugural Formula One Las Vegas Grand Prix as “The Greatest Racing Spectacle on the Planet.”[21] A few months later followed the second incident in Miami, Florida. Formula One was accused of once again infringing the IMS slogan when LL Cool J was tasked with introducing the drivers and declared the Miami Grand Prix as “the greatest spectacle in motorsports.”[22] Finally and most recently, promotional material was released for the 2024 F1 season, which started on March 2nd, and once again advertised Formula One as the “greatest spectacle in motorsports.”[23]
Could these three uses be considered passing off or trademark infringement? Is the claiming that your racing series is the greatest in motorsports really different from a claiming that it is the greatest in racing, and is that different from claiming it’s the greatest racing spectacle on the planet?
Canadian Case Law
Though both of these potential incidents of infringement take place in America, when viewing them from a Canadian lens, a guiding case on confusion between slogans comes from Sleep Country Canada Inc. v Sears Canada Inc.[24] This case was brought by Sleep Country, who was seeking a permanent injunction based on the defendant’s slogan being confusing. Sleep Country’s slogan since 1984 has been “WHY BUY A MATTRESS ANYWHERE ELSE” in TV, radio, print, and online advertising. The slogan was registered in 1995.[25] In July 2016, Sears began to use the slogan “THERE IS NO REASON TO BUY A MATTRESS ANYWHERE ELSE”. Much of the decision turned on the requirements of establishing of irreparable harm under the injunction test in RJR-Macdonald and whether unquantifiable damages meet the requirement.[26] However, on the trademark-related issues, Sleep Country succeeded in establishing that the use of Sears’ slogan would (1) be likely to result in confusion and (2) that depreciation of goodwill and loss of distinctiveness were likely to result from the confusion.
For the former, the court used the test for confusion in Veuve Cliquot,[27] finding that the “somewhat hurried consumer” would likely be confused based on the almost identical slogans that promote the same “value proposition” and are used to sell mattresses to the same market of consumers.[28] For many of the same reasons, the court also found, based on the Veuve Cliquot test for depreciation of goodwill under s. 22 of the Trademarks Act,[29] that the average consumer would “likely make a mental connection” between the two slogans which would result in Sleep Country’s distinctiveness to erode and goodwill to depreciate.[30]
To compare IMS’s situation to the Canadian case law, on first impression, the similarities between “The Greatest Spectacle in Motorsport” or “The Greatest Racing Spectacle on the Planet” and “The Greatest Spectacle in Racing” – where only one word is different, or a few words were added – echo the similarities in the Sleep Country and Sears slogans. IMS’s slogan is similarly trademarked, has attracted decades of goodwill, and is used in the same industry as the allegedly infringing competitor, much like Sleep Country. Much of the Sleep Country case rested on Sleep Country proving that, despite being unable to quantify damages, they still met the test for irreparable harm; though IMS has similar prima facie facts, proving that they have suffered damage through the three brief infringements would be a high hurdle to conquer.
Overall, it seems as if Formula One and IMS will likely settle this behind closed doors, as they did March and May 2023, unless the potential infringements continue to occur, in which case IMS is “prepared to take every measure possible to protect” their trademark.[31] The two motorsport communities will be watching, either way.
BIBLIOGRAPHY
[1] Free World Trust v Électro Santé Inc., 2000 SCC 66 at para 42
[2] Fédération Internationale de l’Automobile, 2026 Formula 1 Power Unit Technical Regulations, pp. 73, 75, online: www.fia.com/sites/default/files/fia_2026_formula_1_technical_regulations_pu_-_issue_1_-_2022-08-16.pdf
[3] Motorsport.com, “Patents in F1 Explained”, 13 January 2012, online: https://www.motorsport.com/f1/news/patents-in-f1-explained/3218781/#:~:text=%22The%20lack%20of%20patents%20in,of%20the%20season%20in%20question.
[4] Canadian Intellectual Property Office, “How long does it take on average to get a patent grant?”, online: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/patents/expedite-your-patent-application
[5] https://www.fia.com/regulation/category/110
[6] https://www.fia.com/regulations
[7] Allen & Overy, “No Patents, No Problem: how Formula 1 technology races ahead without patent protection”, 26 February 2024, online: https://www.allenovery.com/en-gb/global/news-and-insights/publications/no-patents-no-problem-how-formula-1-technology-races-ahead-without-patent-protection
[8] Jack Rogan, “Formula 1: A Driving Force Behind Intellectual Property?”, 31 March 2019, online: https://www.vennershipley.com/insights-events/formula-one-a-driving-force-behind-intellectual-property/
[9] Supra note 7.
[10] Canadian Intellectual Property Office, “What is a trade secret?”, online: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/what-intellectual-property/what-trade-secret
[11] Ibid.
[12] Fédération Internationale de l’Automobile, 2023 Formula 1 Technical Regulations, p. 136, online: www.fia.com/sites/default/files/fia_2023_formula_1_technical_regulations_-_issue_4_-_2022-12-07.pdf
[13] Ibid.
[14] Jake Boxall-Legge, “The biggest incidents of F1 cheating: Spygate, Crashgate, and More”, 04 August 2023, online: https://www.motorsport.com/f1/news/f1-cheating-spygate-crashgate/6555686/
[15] Ibid.
[16]https://tsdr.uspto.gov/#caseNumber=74427688&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
[17]https://tsdr.uspto.gov/#caseNumber=87683740&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
[18]https://tsdr.uspto.gov/#caseNumber=76528713&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
[19] https://ised-isde.canada.ca/cipo/trademark-search/1359767
[20]https://tsdr.uspto.gov/#caseNumber=73535928&caseSearchType=US_APPLICATION&caseType=DEFAULT&searchType=statusSearch
[21] Nathan Brown, “Now, I’m not saying this was purposeful/pointed/on purpose, but also don’t know it wasn’t either…” (15 March 2023), online: X, https://x.com/By_NathanBrown/status/1636006591601205252
[22] https://youtu.be/N109mlx10NA?si=BOPS9GEUF8K8QJ6e&t=51 at 0:51.
[23] Nathan, “Of course F1 is still using “Greatest Spectacle” as part of their promotions…” (24 February 2024 at 6:48), online: X, https://x.com/IndyNathan/status/1761402760484847859
[24] Sleep Country Canada Inc. v Sears Canada Inc., 2017 FC 148, 2017 CF 148, 2017 CarswellNat 2650.
[25] https://ised-isde.canada.ca/cipo/trademark-search/0758382
[26] RJR-MacDonald Inc. v. Canada (Attorney General), [1995] 3 SCR 199
[27] Veuve Clicquot Ponsardin v. Boutiques Cliquot Ltée, 2006 SCC 23
[28] Supra note 4 at para 94
[29] Trademarks Act, R.S.C., 1985, c. T-13
[30] Supra note 4 at para 110
[31] Nathan Brown, “’Prepared to take every measure possible’: IMS upset over F1s trademark infringements”, 25 February 2024, online: https://www.indystar.com/story/sports/motor/2024/02/25/indy-500-ims-trademark-infringement-greatest-spectacle-in-racing-formula-1-nascar/72732076007/
Communications Law