Ferrari latest to lose out
Even an automotive icon can struggle to produce convincing evidence, writes Leanne Gulliver. C-30 743, ARES Performance AG v Ferrari SpA, EUIPO, 29th May 2020
In 2008, Ferrari protected the 3D shape of its iconic 250 GTO (production of which ceased in 1964) under EU trade mark No. 6543301 for goods in classes 12, 25 and 28 (the Registration).
In 2018, ARES Performance AG (ARES) designed a reinterpretation of that classic model for an unnamed client and was considering launching it to other clients, with a €1m price tag. ARES’ CEO, Dany Bahar, formerly Senior VP, Commercial and Brand at Ferarri, reportedly confirmed that the design was “a modern reinterpretation, not a copy” of the original 250 GTO.
In December 2018, ARES applied to revoke the Registration on the basis that, contrary to Article 58(1)(a) EUTMR, it had not been put to genuine use in the EU between 12th December 2013 and 11th December 2018 (the Relevant Period).
Ferrari filed proof of use, including media articles, reports from the private auction houses Sotheby’s and Bonhams, details of private and specialist vintage sales and invoices issued by Ferrari for the repair, maintenance and restoration of the cars.
The Cancellation Division (CD) recognised that in certain circumstances, use of the mark may be considered genuine if those goods had been sold at one time and were no longer available (C-40/01, Minimax). This includes the sale of spare parts and aftersales services (eg, maintenance and repair services).
However, the CD held that Ferrari’s evidence merely demonstrated that a vehicle model in the shape of the mark was built between 1962 and 1964, and was insufficient to demonstrate use of the Registration for the class 12 goods during the Relevant Period. Sales in the Relevant Period were made by third parties, not Ferrari, and although aftersales services took place they did so under the trade marks Ferrari, Ferrari Classiche and the prancing horse logo.
While Ferrari’s evidence confirmed use of the Registration on 250 GTO toy-car models and scale-model cars during 2017 and 2018 in Italy, Holland, Poland and Spain, this use was insufficient to maintain class 28 in its entirety, and the CD curtailed the specification to those exact goods. The evidence in respect of class 25 was also found to be insufficient.
This is just the latest in a line of cases looking at the challenges manufacturers have faced when relying on trade mark protection for car designs. At the time of writing, Jaguar Land Rover had just lost its legal battle before the High Court to protect the design of its Defender model, clearing the path for INEOS to build its Grenadier. Likewise, the London Taxi Company has struggled to enforce its shape marks before the UK court.
Predictably, Ferrari has appealed class 12 of the decision. However, even if it is successful, Ferrari may not ultimately reach the chequered flag. ARES also filed a declaration of invalidity on the basis that the Registration is non-distinctive, that the sign consists exclusively of a shape that gives substantial value to the goods, and that the application was filed in bad faith.
- Genuine use includes any use that maintains a share in the market, use that relates to goods or services that have already been marketed, and use on parts that are integral to the goods or services, such as aftersales services relating to them
More case comments:
What constitutes use has been given concrete dimensions, writes Amelia Skelding. C-684/19, mk advokaten GbR v MBK Rechtsanwälte GbR, CJEU, 2nd July 2020
But the final word was given to the Examiner, explains Chris Thomas. R 2630/2019-4, Logitech Europe SA v Fourth Board of Appeal, EUIPO, 3rd July 2020
Trade mark law may be catching up with the digital era, suggests Anousha Vasantha. C-763/18 P, Wallapop SL v EUIPO & Unipreus SL, CJEU (AG), 25th June 2020
Survey evidence did not cement its arguments, notes Sharon Kirby. O/353/20, KO-CO (Opposition), UK IPO, 15th July 2020
Osborne Clarke LLP