MONDAY, 10 MARCH 2008
Loved this one: The IP Factor blogger Dr. Michael Factor - an Israel Patent Attorney of Factor Patent Attorneys - published an interesting issue today: can the owner of a Ferrari infringe the Ferrari trade mark by modifying it in such a way that the worlds's fastest limosine is created? UK care hiring company Stylelimousines (http://www.stylelimousines.co.uk/) did it, but apparently received a demand from Ferrari to remove the Ferrari badge from the car, 'claiming that the scope of modifications is too signifacnt to allow the car to be marked as being a Ferrari.' In other words: Stylelimousines infringes the Ferrari trade mark.
Has Ferrari a point? Michael Factor - who has also an international reputation as a magician! - thinks so: 'If someone drives into the elongated side panels, the protection afforded customers does not come up to usual Ferrari standards. The border between minor and major modifications could do with additional clarification however. Clearly, a novel paint job or furry dice does not stop a Jag from being a Jag. If one buys a car, isn't it one's own to do what one likes with?'
Certainly Stylelimousines bought a Ferrari car that it owns, but certainly not the Ferrari trade mark, which exclusively belongs to Ferrari S.P.A. Ferrari S.P.A. is entitled to act against infringements and it's a quite clear concept that ownership of a car as such does not include the rights conferred to the car's trade mark. A trade mark shall confer on the prorietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using the trade mark in the course of trade (this element is important here because Stylelimousines makes its business of renting the stretched Ferrari to customers) for - to be short - goods which are identical or similar with those for which the trade mark is used and there exists a likelihood of confusion on the part of the public or - since the Ferrari trade mark for cars is undisputable a well known trade mark (and certainly a trade mark with a repute for cars) - the use of the trade mark takes unfair advantage of, or is detrimental to, the distincive character or the repute of the trade mark without due cause.
However these prevention rights can not be exercised if the car that is involved has been put on the market under the trade mark by the proprietor or with his consent. That should not be an obstacle for Ferrari: it should be easy for Ferrari to prove that they did not put a stretched Ferrari on the market nor permit Stylelimousines to produce one. So Ferrari's trade mark rights are not exhausted and thus able to oppose the use of the Ferrari trade mark. But that of course does not mean that Ferrari does not have to prove that there is an infringement, which could be a reason for Ferrari to argue alternatively that there exist legitimate reasons to oppose this further commercialization of the car concerned, especially where the condition of the car is changed or impaired after it has been put on the market.