'Prancing horse' marks can continue to coexist

In Ferrari SpA v Oenoforos AB (PBR 08-279), the Courts of Patent Appeals has found that there was no likelihood of confusion between two marks including a prancing horse design.

Oenoforos AB, a wine distributor, was granted registration for a figurative trademark consisting of the words 'Via del Campo' and the image of a prancing horse on a dark background. The trademark was registered for alcoholic beverages in Class 33 of the Nice Classification.

Ferrari SpA objected to the registration on the grounds that Oenoforos' mark was confusingly similar to Ferrari’s registered trademark, which consisted of a black prancing horse on a light background. Ferrari's mark was also registered for goods in Class 33, among other classes. In addition, Ferrari argued that its trademark was entitled to a broader scope of protection since it had become exceedingly well established on the Swedish market.

  • the trademarks at issue covered the same or similar goods; and
  • Ferrari's mark was well established and publicly known for racing cars and exclusive sports cars.
However, with regard to the type of goods concerned, it was not proven that Ferrari's prancing horse mark was well established. The office thus found that the mark did not benefit from an extended scope of protection. In these circumstances, and following an overall assessment of the marks, the office held that the parties' marks were not confusingly similar. The mere fact that they both included a prancing horse was deemed to be insufficient.

In November 2010 the Court of Patent Appeals upheld to the office’s decision, thus allowing the registrations for both marks to continue to coexist.

Tom Kronhöffer and Sofia Ekdahl, MAQS Law Firm, Stockholm

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