Formula One and now the Australian Grand Prix Corporation look to cash in – the big Huey shoey bluey

You might have heard of the shadow boxing match between the Formula One’s licensing arm and The Mad Hueys – well, as of 2 May 2018, the Australian Grand Prix Corporation has decided to enter the fray.

Hold on to your boots, we’re going in.

The celebratory act of drinking beer or champagne from a shoe (the “shoey”) is a now-iconic Australian celebration which has been paraded on the international stage by Australian motorsport champions. Australian Formula One driver Daniel Ricciardo recently started celebrating his grand prix wins with a shoey, following Australian Moto GP driver Jac Miller who celebrated with a shoey after winning his first race in 2016.

While the shoey came to international attention in the racing world by drivers like Ricciardo and Miller, the shoey first gained notoriety in Australia from The Mad Hueys – an Australian surfing and fishing crew.  In fact, The Mad Hueys were credited as being the source of the phenomenon by Ricciardo himself.

The Mad Hueys regularly post videos to their popular social media pages featuring all sorts of c-c-c-c-crazy antics (frequently (and relevantly) including people drinking out of their shoe). They have made a successful foray into the retail industry and own a popular line of apparel and merchandise, with some products making direct reference to the shoey.

But the publicity and novelty that the shoey brings did not go unnoticed by Formula One, who sought to commercialise the success of the shoey by applying to register a trade mark for the word “SHOEY” in over 20 countries, potentially enabling it to reap the benefits of exclusive use of the word shoey in respect of clothing and glassware.  Don’t we just love it when powerful corporations try and ruin something fun for everyone?

And just when you thought the situation was messy enough, on 2 May 2018 (two whole days after The Independent broke the story on the Formula One/The Mad Hueys applications), along comes the Australian Grand Prix Corporation who filed an application to register SHOEY in respect of a large swathe of goods and services. Here is a brief summary of the goods and services applied for:

  • class 9 (broadly covering DVDs, downloadable software, “software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network”(!), protective eyewear and helmets)
  • class 14 (jewellery, watches, clocks, trophies and plaques etc)
  • class 16 (printed matter, paper, cardboard, wrapping paper, newsletters, newspapers, autograph books, collector cards, pamphlets, commemorative pieces made from paper or cardboard, framed prints, framed photographs)
  • class 18 (handbags, carry bags, backpacks, leather goods)
  • class 24 (textiles, bedding, flags and banners)
  • class 26 (lace and embroidery, ribbons, buttons, hooks, lapel pins, badges)
  • class 28 (games, toys and playthings, card games, balls for games, exercise and physical training apparatus and articles – oh, and decorations for Christmas trees obviously)

(You can check out the full list of specifications here)

Why? Because money. Or maybe the Australian Grand Prix Corporation was jealous of all the public jeering being directed towards the Formula One following The Independent’s story and decided to one-up the F1 to claim some of that sweet jeering for itself.

Round one – F1 v The Mad Hueys

There is a twist to this story, though. It seems that The Mad Hueys aren’t slow starters.  In fact, unbeknownst to most, in 2017 we had a race on our hands – on one side, the rag tag bunch of lovable larrikins who enjoy drinking beer of questionable quality from their dirty old sneakers, and on the other, the ice cold overly engineered corporate interests of Formula One’s licensing arm (“F1”).

This raises some questions. We have some answers.

  1. Which is faster – The Mad Hueys’ “animal” series of fishing boats, or the legendary formula one race cars?
  • Technical answer: It depends on whether the race is on a road or over a body of water
  • Answer which keeps with the metaphor: The Mad Hueys (in a few countries at least)
  1. Is… that cool for the F1 to do something like this?
  • Technical answer: Legally, yes
  • Personally held views: Ummm not really.

The great Shoey boat-car race of 2018 2017

F1 first applied to trade mark “SHOEY” on 14 July 2017. That application was filed in over 20 countries in two classes: class 21, relating to (amongst other things) glassware, cups and drinking containers, and class 25 covering clothing.  Can we expect to see shoe-shaped glasses filled with high-quality bubbles offered to race winners in the future to prevent the F1’s image from being tarnished with the low brow behaviour of drinking from an actual shoe? Maybe. Would that take away all of the charm and really the point of the shoey? Most definitely.

Filing in class 25 also indicates that Formula One may seek to use the shoey as a trade mark on clothing and apparel.  With racing car drivers and celebrities starting to jump on board the shoey tradition, clearly F1 sees a big bag of cash at the finish line.

However, the F1’s cheeky move to secure the shoey trade mark ran into a speed bump in the shape of a Huey (whatever that is).  In what seems like almost too-good-to-be-true timing, on 9 June 2017, just one month prior to F1’s application, the wife of one of The Mad Hueys filed an application to register the SHOEY trade mark.  (For the purpose of this analysis of the intersection of questionable Australian cultural pastimes and trade mark law, we’re proceeding on the assumption that this was done with the knowledge, consent and support of The Mad Hueys).

The Mad Hueys’ application was filed on a more limited scale than the F1 application: the trade mark is only registered in class 25 for clothing and apparel, and was filed in the EU, Great Britain, Australia and the USA.

Since Mrs Mad Huey filed the application in June, a month prior to Formula One’s application, The Mad Hueys will have exclusive rights to the SHOEY trade mark in respect of clothing in the EU, Australia, Great Britain and the USA (registration in the USA is still pending).  However, since The Mad Hueys only filed in class 25, Formula One is set to own the trade mark in respect of glassware in over 20 countries.

In some no-doubt critical jurisdictions for F1, The Mad Hueys have won the clothing race.  F1 had to concede defeat in the US, removing their class 25 claim from the application before it was accepted.

Cheers!

Coming in last place (for now) – the Australian  Grand Prix Corporation

Almost a year after The Mad Hueys and the F1’s race all but came to an end, a last-minute entrant has decided to throw its hat in to the ring. On 2 May 2018, the Australian Grand Prix Corporation (is that pronounced “prix” or “prix”?) filed a trade mark application in Australia in respect of approximately a million different goods and services. Perhaps most concerning, some of these goods and services seem targeted towards preventing others from capitalising upon the SHOEY (I’m going with “prix”).

While claims like “software to enable uploading, posting, showing, displaying, tagging, blogging, sharing or otherwise providing electronic media or information over the Internet or other communications network” aren’t really enough to stop people from taking videos of shoeys and sharing those videos on social media (technically the claim covers software, not videos) – it does look awfully suspicious.

Other claims are obviously targeted towards other sports – memorabilia, framed photographs, autograph books, trophies – oh, and of course, refrigerator magnets.

The Grand Prix have officially brought a knife to a shoe fight (quick, someone register SHOEY for knives (actually just don’t).

So what happens now?

Well, on a global scale (and putting Australia aside for a minute), it is all a bit of a mess. If we assume all pending applications will be registered, the F1 will be able to use the SHOEY mark on glassware and clothing (and can prevent others from doing so) in some countries.  In other countries, where The Mad Hueys filed first, F1 won’t be able to use the trade mark on clothing – as The Mad Hueys will have the exclusive rights to do so.  If F1 were to use the SHOEY mark on clothing in these jurisdictions, it would infringe The Mad Hueys trade mark.  Similarly, if The Mad Hueys used the SHOEY mark on glassware in any of the countries in which F1 has a registered trade mark, it would infringe F1’s rights.

This leads us to the possibility of having F1 glassware and The Mad Hueys’ clothing on sale in the same jurisdictions.

From a practical perspective – who knows.  The basis of filing a trade mark application in most jurisdictions is that the applicant has at least an intention to use the trade mark in the future.  So we should, in theory, see some products with SHOEY branding – but we can’t be sure.

In Australia at least, there might be some further developments. There are a number of grounds on which a person may seek to oppose or cancel a trade mark application, including that the applicant/registrant is not the owner of the mark. Unfortunately, “un-Australian conduct” is not one of them.

We’d like to wish the Australian Grand Prix Corporation the best of luck in obtaining registration of their application – no doubt they will need it.

Does this mean capitalism has ruined shoeys and if I record a video of a shoey someone I might be paid a visit by some highly paid F1 lawyers wearing checkered suits and holding tyre irons menacingly?

Not… really.

The fact that F1 and The Mad Hueys own their trade mark registrations doesn’t necessarily prevent anyone from doing a shoey, calling it a shoey, and labelling it as a shoey on a video which is subsequently uploaded on to a shoey sharing site. Even the Australian Grand Prix Corporation’s application doesn’t go quite that far. And (assuming the application is registered (HAHAHA)), we can take comfort in the fact that they would never try to enforce their rights in that way – because that never happens, right everyone?

Could that happen? If someone were to apply to register SHOEY in respect of entertainment services – possibly. Given the extent of the Australian Grand Prix Corporation’s application, we’re surprised they didn’t. But hey, at least they have umbrellas, parasols and walking sticks covered.

The main legal hurdle in Australia for a company who might wish to register SHOEY as a trade mark in respect of entertainment is section 41 of the Trade Marks Act 1995 (Cth). Section 41 mandates that if a trade mark is not capable of distinguishing the goods and services claimed, it must be rejected.

The application for SHOEY in respect of entertainment services would certainly be more difficult than applying for clothing and glassware. In those classes, it is easy to establish that the word SHOEY does not describe the goods. In respect of videos that could include a demonstration of a shoey, a trade mark application is far more likely to meet objection on the grounds that the word is descriptive of something which may be a feature or characteristic of the services claimed.

IP Australia often phrase the section 41 test as a question of whether another trader would want to use the trade mark in good faith to describe their goods and services.  While this is a simplification of the test, it doesn’t quite represent the position at law.

Given the SHOEY mark would be descriptive of a type of video depicting a shoey, should it be capable of being registered? Or is the question whether SHOEY describes entertainment services or videos generally? (No)

Would the application for SHOEY be accepted in class 41? I guess there is one way to find out, Mrs Mad Huey.

(For what it is worth, for IP Australia to accept SHOEY for registration in class 41 for videos/entertainment services, we think that the applicant would be required to include a carve-out for entertainment services or videos involving acts of… consuming liquid from a shoe… which would make the trade mark registration redundant for use as a sword to capitalise on shoey videos)

The finish line

It remains to be seen what lies in store for the humble shoey.  There are so many more questions.

Can or will The Mad Hueys manoeuvre a daring overtake of Formula One’s cheekiness with some cheekiness of their own, and apply to register the shoey for entertainment services? Would that application even be capable of being registered? Will Formula One enforce its ownership and commence infringement proceedings against anyone who dares to use the shoey on glassware? Does anyone want to use the word shoey in respect of glassware given that this represents the antithesis of what a shoey is?

Does the Australian Grand Prix Corporation honestly believe that they alone should own the rights to the word SHOEY, despite having precisely nothing to do with the creation of the phenomenon? Will their application survive the opposition period, let alone the examination period?

Only time will tell.

VRRRRROOOOOOOOOOOM

(Thanks to Katelyn Lamont for her help in preparing this article)

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