Faithful reproduction of model cars and trademark rights: the Ferrari case
The case originates from a proceeding initiated by the well-known company Ferrari against the company Brumm before the Court of Modena. The Maranello-based company believed that the defendant's activity of producing model Ferrari cars with the well-known “Cavallino” trademark violated its trademark rights because of the absence of prior consent. The Court of Modena, in rejecting the plaintiff's claims, had declared the defendant's conduct to be lawful on the assumption that the faithful reproduction of model cars containing a trademark owned by a third party did not constitute any infringement of industrial property rights, nor copyright infringement and unfair competition. Ferrari appealed against this decision before the Bologna Court of Appeals, which confirmed the initial ruling and restated how Brumm's production was lawful because, on the one hand, it did not cause the public any confusion, and on the other hand, it lacked the artistic value required for protection under Italian copyright law.
Ferrari appealed to the Italian Supreme Court against this decision, specifically complaining that the Bologna Court of Appeals had attributed to the trademark only the function of guaranteeing the origin of the product, while it failed to to consider two other important factors, such as advertising and the investment made. According to the appellant, for the purposes of a lawful use of another's trademark, it is not enough to have a faithful reproduction of the real model but it is necessary that the use respects the canon of correctness: this had not happened, since, in Brumm's model, only Ferrari's trademarks were reproduced and there was no reference to the manufacturer, resulting in confusion as to the source of the origin. For these reasons, Ferrari requested a preliminary reference to the Court of Justice of the European Union.
However, this request was rejected by the Italian Supreme Court on the assumption that the questions posed by Ferrari had already been referred to the CJEU for a preliminary ruling in a similar case between Opel and Autec. On that occasion, the CJEU had clarified that the affixing of a sign, by a third party, without authorisation from the trademark owner, constituted a use that the trademark owner was entitled to prohibit only where it would be detrimental to the functions of the trademark or where such use would take unfair advantage of the distinctive character or the reputation of the sign.
In this way, the ECJ had dealt with the mark not only in its distinctive function but had also lent protection in cases of dilution of the well-known mark, corrosion, and parasitic attachment.
The ECJ, moreover, had clarified that "the affixing of a sign which is identical to a trade mark registered, inter alia, in respect of motor vehicles to scale models of that make of vehicle in order to reproduce those vehicles faithfully is not intended to provide an indication as to a characteristic of those scale models, but is merely an element in the faithful reproduction of the original vehicles", thus not deeming Article 6(1)(B), dir. No. 89/104, which allows the trademark owner to prohibit third parties from using it if there is a likelihood of confusion on the part of the public. Finally, the Court had clarified that it was up to the national court to assess in the specific case whether the use of the model allowed the user to take unfair advantage of the distinctive character or reputation of the mark.
For these reasons, the Supreme Court held that the decision of the Bologna Court of Appeals was correct, considering that it had been proven during the trial that the use of Brumm's sign had not damaged Ferrari's famous trademark in any significant way. Moreover, the “Ermellini”, on the one hand, ruled out that the indication of the plaintiff's mark on the packaging containing the models had an evocative function of the trademark or the quality of the product and, on the other hand, rejected the claim for protection under copyright law because it was generic and lacked evidence of originality. For this reason, the Italian Supreme Court dismissed the appeal of the well-known Italian company, declaring the additional grounds of appeal inadmissible.
