Colour red protectable as unregistered mark with a reputation

Italy
In an order issued on October 20 2009, the IP Division of the Court of Milan has confirmed that the colour of Ferrari Formula 1 cars (not limited to a specific nuance of red) was protectable as an unregistered trademark with a reputation. The court granted an injunction and ordered the seizure of unauthorized Formula 1 merchandising products (including clothes), finding that their red colour inevitably brought Ferrari to mind and could cause confusion with original products marketed by Ferrari's licensees. The court also ordered the seizure of the defendant's assets to secure payment for potential damages, which remain to be assessed.
 
In 2008 the Court of Milan had already recognized that the colour of Ferrari Formula 1 cars was protectable as an unregistered trademark in three different cases, which concerned Formula 1 toy cars (see, eg, "Overall appearance of Ferrari Formula 1 cars protectable as unregistered mark"). Placing particular weight on the perception of the target public, the court had recognized that the colour red, used as the unique or predominant colour of the products at issue, was a trademark which was unequivocally linked to Ferrari in the mind of consumers. In the first of these cases, the court had also held that the colour red was recognizable in the entire “field of Formula 1 and car racing”.
 
The present order, which was based on the same rationale, expressly extended protection to products other than Formula 1 toy cars, provided that these products were perceived by the public as being linked with the Formula 1 world (eg, because they bear signs linked with the Formula 1 world or resemble the red suits worn by Ferrari drivers and mechanics).    
 
Protection was granted based on Articles 1 and 2 of the Code of Industrial Property and Article 2598(2) of the Civil Code. The courts have considered that Articles 20(1)(a) and (c) of the Code of Industrial Property, which define the scope of protection of registered trademarks, also apply to well-known unregistered trademarks (see, eg, "Unregistered shape of products may be protected against infringement").
 
In the present case, the indisputable reputation of Ferrari's red colour throughout the world meant that there was no need to prove a likelihood of confusion. It was sufficient to prove that use of the colour red by the defendant gave rise to an unfair advantage or was detrimental to the reputation of the mark. The court found that the defendant had chosen to use the colour red specifically to bring Ferrari to mind. The court thus concluded that use of Ferrari's unregistered colour mark gave a clear and unfair advantage to the defendant's products.
 
The court also pointed out that the defendant's actions could cause significant damage to Ferrari because:
  • the defendant's products were of poor quality; and
  • the presence on the market of unauthorized products using Ferrari's colour mark could dilute the distinctiveness and reputation of the mark.
Cesare Galli, IP Law Galli, Milan

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