Shape trademarks drive fast – The (almost) never-ending myth of the Ferrari 250 GTO
Do you remember the shape of the “super-car” Ferrari 250 GTO? Readers who are car lovers probably do.
Happy to introduce a new article from the lawyers of the SIB LEX law firm in Milan, experts in the protection of IP rights. This time no bicycles to ride, but only cars to drive!
The Ferrari 250 GTO, produced from 1962 to 1964 with only 39 units, is one of the most famous and celebrated cars out there and recently protected as copyrighted work by the Court of Bologna.
But as many car lovers remember the shape of the acclaimed car, the European Union Intellectual Property Office (EUIPO) probably does not, since with a decision (No. 6543301) dated to May 29th, 2020, they declared the “revocation for lack of use” of the trademark corresponding to the Ferrari 250 GTO’s external shape (yes, shapes may be registered as a trademark).
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But what does “revocation for lack of use” mean?
A European trademark could be “revoked for lack of use” if for an uninterrupted period of five years, the trademark has not been genuinely used in the European Union for the goods or services for which it has been registered, and if there are no legitimate reasons for non-use. Any symbolic or sporadic uses are not valid in the computation.
If you are wondering why the trademark owner is obliged to use it, you should keep in mind that a trademark is a “monopoly” for the owner to use. The monopoly is subject to the condition that the owner has to use such trademark.
In verifying the genuine use of the EU trademark, all the facts, and circumstances that may prove the commercial exploitation must be taken into account. Evidence of use must indicate the place, time, consistency, and nature of the use of the contested trademark for the products and/or services for which it was registered.
In this case, in order to prove the use of the Ferrari 250 GTO trademark, the company presented the sales made by Ferrari S.p.A of the original cars, even in international auctions and sold for considerable amounts – including a Ferrari 250 GTO that was recently sold for over 48 million dollars recently.
Since “these sales do not constitute actual use attributable to the owner of the trademark, because the latter has no influence on these resales”, the EUIPO considered the evidence non-sufficient. Moreover, many auctions and resales took place in the United States and therefore hold no relevance for a European trademark. The EUIPO also did not consider sufficient evidence of the after-sales services provided by Ferrari to its collectors.
The only “documented use” was that in relation to toy vehicles, scale models of vehicles, proven by the many models of the legendary Ferrari 250 GTO sold throughout Europe.
This decision (which could be appealed) confirms that it does not matter if the trademark is still alive in the minds of consumers. What matters is the fact that the owner has evidence of the “genuine use” of such a trademark.
It also reminds us of another famous case, the Lambretta case, where the Italian Supreme Court, in a long-standing dispute between Brandconcern BV and Scooters India Ltd (owner of the Italian Lambretta trademarks), declared the revocation for lack of use of the Italian “Lambretta” trademarks even if these trademarks still had “distinctive capacity” in the consumers’ mind.
So, never forget to use your trademark!
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