The Ferrari 250 GTO may be the 'world's most expensive car' selling for up to £52 million each, but Ferrari was still unable to prevent its EU trade mark protecting the model's iconic shape from being cancelled.
Ferrari registered the trade mark to protect the shape of its 250 GTO model back in 2008, despite only having manufactured the cars between 1962 and 1964. Ares Design, an Italian car manufacturer, filed a cancellation action against Ferrari's mark, arguing it had not been used for a continuous five year period.
Unlike other intellectual property rights such as patents, designs and copyright, trade marks can last indefinitely provided they are renewed. However, trade marks may also be subject to use requirements: they may be cancelled or 'revoked' if they have not been used within the five year period following registration, or within any other continuous five year period during the trade mark's life. In essence: 'use it or lose it'.
Ares Design argued that Ferrari's trade mark had also been filed in bad faith, as Ferrari never had any intention to use the trade mark.
In cancellation proceedings like these, the Cancellation Division of the EU Intellectual Property Office (EUIPO) will invite the trade mark owner to submit any evidence showing use of their mark during the contested period. In Ferrari's case, whilst the car manufacturer was able to show the shape mark had been used in relation to toy cars, the EUIPO found that the mark had not been used for vehicles in the relevant five year period. As a result, the mark has been cancelled in respect of vehicles due to non-use, but remains valid for toy cars.
This decision could potentially allow other car manufacturers to produce cars in the same shape of Ferrari's 250 GTO. The shape may have once been eligible for protection as a registered design, which protects the appearance of a product. However, EU registered designs can only last for a maximum of 25 years, and must be new to qualify for protection.
Ferrari is not the only big name to have a valuable trade mark cancelled due to non-use. Last year, McDonald's had its EU trade mark for BIG MAC revoked, after failing to show sufficient evidence of use in cancellation proceedings brought by Irish fast-food chain Supermac's. These cases highlight the importance of ensuring that trade marks are put to genuine commercial use, and that documents proving such use are collated and retained so that they can be relied on in any future legal proceedings involving the marks.
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