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Use it or lose it – another cautionary tale from the EUIPO

November 27, 2020, By

The Ferrari 250 GTO is one of the most iconic cars ever made, even those who individuals who are not car enthusiasts will know about this model – even if it is only that it is dubbed the most expensive car in the world.

The 250 GTO was produced by Ferrari in the early 60’s, with Enzo Ferrari personally approving each of the buyers. Although the 250 GTO was originally produced in the 60’s, it was not until 2008 in which Ferrari decided to register a trade mark for the 3D shape of the GTO with the European Union Intellectual Property Office (EUIPO). The mark was registered for vehicles (in class 12), clothing (in class 25) and games and playthings (in class 28).

Around 10 years following Ferrari’s registration of their mark, ARES Design (a company which happened to be founded by a former Ferrari executive) announced that they were planning to release a car which they dubbed the 250 GTO with a modern twist. In response to this announcement Ferrari filed a preliminary injunction against ARES Design who in turn, initiated cancellation proceedings with the EUIPO to have Ferrari’s trade mark cancelled on the basis of non-use and bad faith.

Under Article 58 (1) (a) of Regulation (EU) 2017/1001 European Union Trade Mark Regulation , an EU trade mark can be revoked if for a continuous period of five years the mark has not been put to genuine use in the European Union in relation to goods/services it was registered in relation to.

As mentioned above, Ferrari had registered the mark for vehicles (in class 12), clothing (in class 25) and games and playthings (in class 28) while the last 250 GTO was produced in 1964.

Although Ferrari tried to argue that maintenance of the cars in existence was enough to show genuine use, the EUIPO did not agree. Ferrari’s mark was partially revoked in classes 12 (vehicles) and 25 (clothing) as there was no evidence of use but was not cancelled in class 28 for games and playthings.

Ferrari has since appealed this decision.

This is a recent example highlighting that registering your trade mark is only half the battle, as if you are not using your trade mark then you are vulnerable to having your mark cancelled.

Briffa are experts in all aspects in intellectual law and practice and offer a free initial consultation. If wish to discuss trade mark registration further, then please contact us for a free consultation with one of our specialist lawyers on 020 7288 6003 or at [email protected]

Written by Ceyda Sam, Solicitor

1 Comment. Leave new

  • d.s@sunco.se'
    Dick Sundstrom
    February 10, 2021 4:27 pm

    Hello,
    I studied this with great interest. I just saw Jaguar winning a case in Sweden against a jaguar C Type replica producer. See: https://drive.google.com/file/d/1b4kFoFB5ees_m_SYm7jWH8Xc2aRwAPjc/view
    It is in swedish, but perhaps a translation is easy. Is this case not similar to the Ferrari case? The judgment here came out to Jaguar´s advatage. I am not a lawyer, just interested how the outcome here in Stockholm came out in december 2020 in an different way, or perhaps we talk about different matters here, this is what I don+t fully understand.

    Reply

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