Fun fact: You can trademark a shape. Ferrari did so in 2008 for its then-44-year-old 250 GTO sports car. And, now, Ferrari lost that trademark in a dispute with Ares Design, a custom-car shop located right down the street in Modena, Italy. The decision could pave the way for outside companies to build and sell GTO lookalikes.
Ares, which wanted to build its own take on the rare 250 GTO, took Ferrari to the mat in the European Union Intellectual Protection Office’s Cancellation Division, arguing that the company filed its original trademark in bad faith—essentially, to block efforts at recreation models. It also noted that Ferrari had not used the GTO mark in at least five years, which under EU intellectual property law makes it eligible for cancellation. As Ares stated in its cancellation filing, “with regard to the goods listed [the 250 GTO design], the EUTM was in use in a similar form only for a few years, namely in the 1960s. It is similar to Ferrari’s 250 GTO model, which was created in 1962, with a relatively small production run of 36 cars.”
Ferrari responded with this:
“The 250 GTO model is a sports car produced from 1962 until 1964 only in 39 units, all still existing, and that it is recognised as one of the most glorious and iconic Ferrari cars ever created. Although no longer in production, the 250 GTO is still in great demand. The car and corresponding EUTM have become a symbol of Italian style in the world, making it a way of living and a status symbol.”
The iconic Italian automaker, which is known to fiercely defend and control its brand image, added that it believes opening up the 250 GTO’s design to outside use would devalue real, original 250 GTOs by adding supply to a hotbed of demand. As Ferrari puts it: “Further, the EUTM proprietor argues that Ferrari’s 250 GTO is destined to a very restricted market of collectors, celebrities and super-rich who can afford to spend millions of Euros to buy such an extra-expensive luxury car. This means that, at least as Class 12 is concerned, it will be sufficient to show very few sales of the products, of their spare parts, or of the related activities of maintenance, repair and restoration, to fulfill the use requirement.”
Ferrari’s request for rejection of Ares’ cancellation request was, itself, rejected, although only partially. The European Union Intellectual Property Office awarded Ares a partial victory, releasing the 250 GTO design for “Class 12” use, the designation for vehicles and their assorted components, as well as for “Class 25” (clothing and related merchandise) and “Class 28” (“Games and playthings, except toy vehicles and scale-model vehicles”) uses. Ferrari maintains the 250 GTO trademark for scale models and toys.
The decision in Ares’ favor hinged on the Intellectual Property Office’s Article 58(1)(a), which states trademarks that go effectively unused for a period of five years or more can be revoked. At the heart of this statute is the concept of “genuine use,” which means for a non-textual trademark such as Ferrari’s for the 250 GTO the company needs to actually build and sell a car shaped like it. Ferrari’s insistence that the shape is part of the company’s mystique didn’t sway the European Union’s IP Office, apparently.
So, consider the door open to outside outfits crafting 250 GTO likenesses of their own, much like how Superfast sells Shelby Cobra lookalikes. Just one thing: If Ferrari has its way, none of those companies will be able to use the “250 GTO” name. Days before receiving the EUIPO’s cancellation decision for its 250 GTO non-text trademark, Ferrari filed paperwork to trademark the 250 GTO name, covering automobiles, video games, sunglasses, toys, and more. That name trademark application entered the “opposition period” that lasts until October 2020, after which Ferrari can be awarded the trademark for “Ferrari 250 GTO.” Take that, copy cats!
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