Ferrari powers to victory at Italian Supreme Court
Italy’s Supreme Court has upheld an appeal by Ferrari in a trademark infringement dispute, 15 years after the case was filed.
The luxury car brand had sued the Ferrari Club of Milan, an unofficial group of Ferrari owners, for infringing its prancing horse logo and the long ‘F’ at the start of its name.
Two previous decisions, most recently from the Milan Court of Appeal in 2006, said the use was legal.
This was firstly because Ferrari did not file suit until 1998 – 12 years after the car club changed from being an authorised to an unofficial group – and was therefore judged to have consented to the trademark’s use over a long period.
Second, the courts reasoned, the use of the Ferrari trademark was not seen as commercial activity because the car club, a non-profit organisation, was not considered a business.
But in a decision on November 27, the Supreme Court rejected these two arguments.
“This is a great victory – we are happy, but Ferrari is happier than NCTM,” said Paolo Lazzarino, partner at law firm NCTM Studio Legale Associato, which represented Ferrari.
“It has been a long time, but this is a landmark decision,” he added.
“It’s important firstly because it means that no counterfeit action can be time barred because of the acquiescence of the use of an unregistered trademark. This is the first time that has been decided by the Supreme Court.
“The second point is very interesting. The first two courts said in order to face counterfeit action, you have to be an enterprise – that means making profit. But we showed that an unofficial association of Ferrari owners organised events and trips. It became a business,” he said.
“The Supreme Court said simply that a counterfeiter can be an association that is providing services with economic value on a continued basis – that is a minimum requirement,” Lazzarino explained.
Milan’s Court of Appeal will now re-hear the case, in which Ferrari will seek damages, Lazzarino said. Its main goal, however, is to obtain an injunction preventing the club from using the prancing horse and the long ‘F’, he added.
Lazzarino said: “The Supreme Court decision should stop them using the logo, as well as selling merchandising and using the logo on its website.”
The dispute lays bare the slow pace of Italian litigation. After beginning in 1998, the case was accepted by the Supreme Court 10 years later, and has since taken five years to reach this point.
“This is an ordinary length of proceeding for the Supreme Court, even though it is very long. It is problem of the Italian judicial system, not only in IP, but all legal matters. It is a problem in terms of being competitive against other jurisdictions,” Lazzarino said.
“But Italy is a very good jurisdiction to litigate interim proceedings in,” he added.
