‘Use it or lose it’: Ferrari loses landmark trade mark battle

Ferrari recently lost a landmark legal battle regarding its trade mark covering the shape of one of the world’s most expensive cars: the iconic Ferrari 250 GTO.  We discuss key issues arising from the EU’s Intellectual Protection Office decision below.

With only 39 Ferrari 250 GTOs being built in the 1960s, these iconic shaped vintage cars are estimated to be worth around £50million on the classic car market.  Ferrari’s European Union trade mark covering the shape of its 250 GTOs dates back to 2007 and could be renewed by Ferrari indefinitely.

However, Italian bespoke car manufacturer, Ares Design issued a claim against Ferrari in the EU’s Intellectual Protection Office (“EUIPO”).  It argued that Ferrari had filed its trade mark in bad faith, essentially to prevent third parties (including Ares Design) from producing and selling similar sports cars and that the trade mark had not been used by Ferrari for at least 5 years.  The EUIPO claim is understood to have followed Ares Design’s plans to build a limited run of sports cars, by repackaging newer Ferrari models, with its own modern take on the body design of the 250 GTO.

Ares Design persuaded the EUIPO that Ferrari had not genuinely used the trade mark for at least five years.  This ‘use it or lose it’ argument arises from Article 58(1)(a) of the European Trade Mark Regulation (2017/1001) that provides that a European Union trade mark can be revoked if it has not been put to genuine use for a continuous period of five years and there are no proper reasons for it not being used.

Whilst Ferrari has been permitted by the EUIPO to maintain its trade mark to exclusively make scale model and toy versions of the 250 GTO, that will be of limited conciliation to Ferrari given that its trade mark protecting the 250 GTO shape has effectively been cancelled.

This ‘use it or lose it’ argument was also successfully relied upon by Irish fast-food chain Supermacs last year when the EUIPO revoked McDonald’s European Union trade mark ‘Big Mac’.

Although all trade marks (including shape marks) may be indefinitely renewed, even the most famous trade marks are at risk of being challenged by others if they are not put to genuine use.  This case, therefore, highlights the importance of ‘use it or lose it’ to all trade mark holders.

Our Disputes and Business & Finance teams are highly experienced in advising businesses on intellectual property issues including trade marks.  The Disputes team has also recently worked on several high-profile, high-value and time-critical cases involving the motorsports industry, from injunctions to unfair prejudice petitions. We know how important it is to your business to take urgent action to protect its position and interests.  If you require advice, please do get in touch.