Ferrari Loses Race for 250 GTO Trademark: Dangers Arising From Non-Use of Registered Logos

Ferrari Loses Race for 250 GTO Trademark: Risks Arising From Non-Use of Registered Trademarks

Often referred to as the world’s most expensive car, the Ferrari 250 GTO was originally introduced by Ferrari in 1962. Between 1962 and 1964, only 36 models of the 250 GTO were exclusively produced. The fact that every Enzo Ferrari buyer had to be personally approved only added to the exclusivity of this particular car model. Due to their exclusivity and the fact that the existing models are still running, these models have become a status symbol. One of these models was sold at Sotheby’s for $ 48.4 million in 2018, setting the world record for the most expensive car ever sold at auction. Another model with a 250 GTO was reportedly privately sold for a whopping $ 70 million that same year.

Although the last 250 GTO models were manufactured in the 1960s, Ferrari had only registered one brand of 250 GTOs with the European Union’s Intellectual Property Office (“EUIPO”) In 2008. The brand was registered for a 3D shape of 250 GTO (see below) for three classes: Class 12 (vehicles), Class 25 (clothing) and Class 28 (games and toys).

Source: EUIPO database

A dispute over this brand began when another car company called ARES Design, founded and run by a former Ferrari executive, Dany Bahar, announced its plans for a modern take on the classic 250 GTO model in 2018. Ferrari responded to this announcement by filing an injunction; In return, ARES Design initiated proceedings with the EUIPO to delete the GTO 250 trademark. ARES Design argued that Ferrari filed the trademark application in bad faith and that Ferrari in particular had not used the mark in at least 5 years.

The latter argument from ARES Design relates to the so-called “Use it or lose itPrinciple. The application of this principle in relation to EU trademarks is laid down in Article 58 (1) (a) of Regulation (EU) 2017/1001 on the trademark of the European Union, which stipulates that the EU trademark will be revoked “within an uninterrupted period of time For five years the mark has not actually been used in the Union in relation to the goods or services for which it is registered and there are no reasonable grounds for non-use. “

While Ferrari argued that due to the exclusivity of GTO 250, the occasional sale of questionable products, spare parts, or related maintenance should meet the use requirement, the EUIPO Cancellation Department identified ARES Design’s argument and decided that the registration of the GTO 250 trademark registration should be done by Ferarri is partially revoked in classes 12 (vehicles) and 25 (clothing) because no use of the brand or reasonable reasons for non-use have been proven in relation to these classes in the past 5 years. The use of the GTO 250 brand has been demonstrated in relation to Class 28 (games and toys). Therefore, Ferrari’s trademark remains in effect for this class. It should be noted that Ferrari appealed this decision.

The revocation of the 250 GTO brand should enable the introduction of modern adjustments of 250 GTO by other companies. This case underscores, among other things (see for example McDonald’s disputes regarding the use of trademarks “Mc” and “Big Mac”) the importance of the principle “use or lose” in the field of trademark protection. It can be a reminder to trademark owners that even the most famous and established trademarks can be revoked if they are not actually used for no good reason.