Most consumers associate registered trade marks with names and logos but fewer are aware that a shape of an object can be registered as trade mark if the shape is distinctive and capable of identifying its origin. Classic examples of shape trade marks include the Coca Cola bottle, the Jif lemon container and the Toblerone chocolate bar.
The shape of a car is much more difficult to register as trade mark but, back in 2007, Ferrari was successful in registering the shape of its classic 250 GTO model for protection in different trade mark classes including cars, despite the fact it had not manufactured the 250 GTO since 1964.
Normally, the main form of protection relied upon by car manufacturers is the registered design right which expires after 25 years. By registering the 250 GTO Ferrari as a trade mark, Ferrari sought indefinite protection through the trade mark regime to prevent competitors copying the shape of one of its most iconic cars.
Ares Design brought proceedings before the European Intellectual Property Office (EUIPO) to revoke Ferrari’s trade mark registration in respect of cars on the basis that the trade mark had not been used in the last five years under the commonly referred to ‘use it or lose it’ rule. It also alleged that the trade mark had been filed in bad faith as a defensive mark to prevent competitors from manufacturing cars to a similar design. The EUIPO agreed with Ares Design and the trade mark was revoked, in so far as it applied to cars.
While Ferrari still retains a valid trade mark for clothing and model cars, it will be of little comfort to them now that a competitor is free to replicate the shape of its most expensive car which, on the rare occasion one comes to auction, can command prices of up to $50m.
It remains to be seen whether Ferrari will seek to take advantage of the recent Brompton decision in the European Court of Justice to use copyright as a final line of defence.
