Proof of use of a trademark: Ferrari, red with anger and always conquering!

It is tempting for creators to extend the protection acquired through copyright by filing trademarks, thus acquiring a perpetual monopoly, renewable indefinitely.  

It is probably this objective that pushed the Italian company Ferrari to protect its iconic 250 GTO model by filing a European three-dimensional trademark in 2007 to prevent third parties more effectively from producing similar cars.  

In 2018, a German manufacturer Ares Performance is suing the trademark for failure to use it, consequently leading to its revocation. 

If the mythical Italian manufacturer brought to the EUIPO, the European trademark office, plenty of evidence of sales of the model made mainly between 62 and 64, it could not justify a use for the exploitation of products bearing the 3D mark as represented on the trademark application.  

The Office quite logically rendered a decision canceling the trademark for the vehicle class and validating it only for miniature reproductions. 

If the manufacturer still holds the copyright on its model which allowed him to condemn the same company Ares for counterfeiting the 250 GTO, the office reminds that legend or not, the applicant is subject to the strict and demanding rules of serious use, like any applicant. 

However, Ferrari has filed an appeal in February 2022 since the same question of use also arises for the trademark TESTAROSSA and that a decision of the Court of Justice of the European Community, following a preliminary question, considered that the sale of spare parts or second hand products bearing the mark could validate the use. 

The case is to be followed and the fact that Ferrari never lets go of the case will surprise no one! 

– Nathalie FAYETTE, Industrial Property Attorney and Founder of Mark & Law 

Source:

• European Union trademark application No. 006543301