The IP Division of the Court of Milan has confirmed that the colour and overall appearance of Ferrari Formula 1 cars may be protected as unregistered trademarks with a reputation (November 18 2008). The order upheld an ex parte decree issued on July 22 2008.
An ex parte order protecting the colour and overall appearance of Ferrari Formula 1 cars was granted by the court in different proceedings on January 21 2008. This order was upheld in August 2008. The Court of Milan also dismissed an appealagainst this first order on September 12 2008.
In the present case, the court prohibited the use of the FERRARI marks for Formula 1 toy cars. The court found that the colour and livery of the defendant’s toy cars (which, in some cases, bore logossimilar to the Ferrari ‘prancing horse’ logo or to the trademarks of Ferrari’s sponsors in the Formula 1 championship) inevitably brought Ferrari to mind and could thus mislead the public into believing that the cars were original Ferrari products manufactured by Ferrari’s licensees. The court also recognized that the registered Ferrari ‘Enzo’ model (one of the most famous sports cars ever made) was protectable - not only for cars, but also for toys.
The court thus confirmed that the colour red was protectable as an unregistered trademark with a reputation in relation to Formula 1 cars and replica toys. Placing particular weight on the perception of the target public, the court concluded that the colour red (used as the unique or predominant colour of the car) was unequivocally linked to Ferrari in the mind of consumers. In one of the abovementioned previous rulings, the court had stated that the colour was recognizable in the entire “field of Formula 1 and car racing”, as well as for all related products.
The court further stated that due to the indisputable reputation of the FERRARI marks worldwide, it was sufficient to show that use of Ferrari’s marks gave an unfair advantage to the defendant or was detrimental to Ferrari’s marks. The court held that the choice of the colour red (or of the typical livery of Ferrari Formula 1 cars) rendered the defendant’s goods more attractive and diluted the distinctiveness of the well-known FERRARI marks.
The court thus ordered the withdrawal from sale of the goods at issue and imposed a fine on the defendant.
Cesare Galli, Studio IP Law Galli, Milan