Ferrari successful before Supreme Court against unofficial Ferrari owners' club

In a dispute over the use of Ferrari SPA’s trademarks by an unofficial club of Ferrari owners, the Italian Supreme Court has upheld Ferrari's appeal and overturned the decision of the Court of Appeal (Decision 26498/2013, November 27 2013).

The Court of Appeal had considered that the use of Ferrari's well-known trademarks (the 'prancing horse' logo and the elongated ‘F’) made by an unofficial association of Ferrari owners - the Ferrari Club Milano - was legitimate. The Court of Appeal's decision was based of the following grounds:

1. Ferrari had acquiesced in the use of the marks. The use of Ferrari's marks by Ferrari Club Milano had been authorised by Ferrari between 1978 and 1986. From 1986, Ferrari Club Milano had become an unofficial club, but had continued the (unauthorised) use of the marks until 1998. Ferrari had not challenged such use or filed any action against Ferrari Club Milano.
2. The use of Ferrari's trademarks made by Ferrari Club Milano was not commercial in nature, since the club is a non-profit organisation. Therefore, the use of Ferrari's trademarks was merely descriptive.

In its decision of November 27, the Supreme Court rejected both of the above arguments:

1. According to Italian law, acquiescence in the use of a later trademark can apply only in relation to registered trademarks. The fact that Ferrari was aware of the use of non-registered trademarks made by Ferrari Club Milano could not, therefore, prevent Ferrari from bringing action against such use. Italian law clearly indicates that the owner of an earlier trademark who had acquiesced, for a period of five years, in the use of a later registered trademark is not entitled to challenge such use. However, a legal action cannot be barred due to the trademark owner's possible acquiescence in the use of a non-registered trademark.
2. The fact that the use was made by a non-profit/non-commercial entity did not exclude a finding of infringement. In this regard, the court explained that an infringer can also be an association that simply provides services with an economic value.

On the basis of the above, the Supreme Court sent the case back to the Court of Appeal for reconsideration.

Marcella Florio and Donatella Prandin, Bugnion SpA, Milan