Ferrari lost a landmark legal battle regarding its trademark covering
the shape of its iconic 250 GTO, the world’s most expensive car.
Design, an Italian bespoke car manufacturer, won the case on the
grounds that Ferrari had not put its trademark to genuine use for a
continuous period of five years.
The 250 GTO changes hands these
days for around £50 million. The decision, made by the EU’s Intellectual
Protection Office, effectively cancels the trademark that Ferrari has
held since 2007. Whilst Ferrari still holds the trademark over toy cars
of the same shape, this is of little solace given the potential impact
on the value of the car itself.
According to EUIPO documents,
lawyers acting for Ares Design said the trademark had been ‘filed in bad
faith, namely, as a defensive mark in order to block third parties to
produce and sell similarly built sports cars’.
The Ferrari case
illustrates the dilemma faced by car manufacturers in long term
protection of the shape of their vehicles, Claire Lehr, Partner at EIP
and Nora Fowler Associate at EIP tell us.
When examining the
IPO’s judgement, they told us, “Ferrari’s 250 GTO was protected for
vehicles through a shape mark. Trademarks, once registered, may be
indefinitely renewed, but even the most famous of marks must be used to
safeguard them against non-use cancellation proceedings.
case, Ferrari filed in 2007 but had only “used” the 250 GTO shape mark
between 1962 – 1964 on vehicles other than toy cars. Would a design
right have served Ferrari better? Design rights (RCDs) are not
indefinite only give 25 years protection, giving a limited protection
for the 250 GTO’s iconic shape.”
At the centre of this case was
‘Article 58(1)(a) EUTMR’. This claims that a European Union trademark
can be revoked if, within a continuous period of five years, the
trademark has not been put to genuine use.
This was the same
point of debate used last year by Irish fast food chain Supermacs when
it successfully fought McDonald’s over the trademark ‘Big Mac’.
iconic Ferrari 250 GTOs are among the most expensive cars ever sold in
private deals and auctions, with the most expensive being bought for
around £52.3million in 2018.