Ferrari loses iconic trade mark battle

Ferrari has lost their trade mark for the 250 GTO in battle with Ares Design
If you are familiar with Trade Marks you will know that once a trade mark has been filed, you must use the trade mark in the goods and services you have provided, within a 5 year period . If you fail to use the mark accordingly there is a risk that the mark could be removed from you or removed in certain goods and services.

This has been the recent case for Ares Design, an Italian bespoke car manufacturer, against highly reputable, Ferrari. Ares noted that Ferrari had failed to use their trade mark for a 5 year period which deems the mark to be “expired” under the non-use clause- Article 58(1)(a) EUTMR.

Ferrari has held ownership of their trade mark since 2007 (when the mark was renewed) however the EU Intellectual Property Office has since removed this from them. Ferrari still holds ownership of the toy cars in the same shape however this does not equate to the price of the car.

It was believed that the trade mark was filed in bad faith to prevent others from registering and producing a design that was similar. This is an issue that can been seen with many car manufacturers trying to protect their designs.

Once a trade mark has been filed you can renew this over and over again after a 10 year period has passed. Even if you have a highly reputable mark this does not stop you from having your mark removed from the register if it is not used.

It could be argued that the Ferrari 250 GTO should have been filed under a design right as opposed to a trade mark. This is because the design right gives you a limited period of protection that would have covered them for the years that Ferrari used this 250 GTO shape on their cars and toys alike.

If you are concerned that your mark is at risk of being classed as “non-use” or want more information on filing a trade mark. please do not hesitate to contact the Trademarkroom team today.

Anna Orchard

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