The Club is just Ferrari

Ferrari S.p.A. can impede a supporters Club to use trademark Ferrari without its consent.

This was the decision of the Supreme Court (judgment 27.11.2013 no. 26498) that has agreed with the company of Maranello, modifying the preceding two judgments of first degree and of appeal that had instead not agreed with it.

The Club had defended itself on the basis of two arguments: firstly, highlighting Ferrari’s tolerance that for a long time had not opposed to the use of the trademark; secondly, claiming that it did not carry out a business activity and that it used the trademark in a merely descriptive manner.

On the first point, the Court has asserted that in the present case art. 28 of the Industrial Property Code (CPI) cannot be applied since the tolerance of the use of the trademark, prolonged for five years, “validates” the trademark only on condition that the trademark has been registered before this period (in the same direction also the Court of Justice in the case Budejovicky Budvar of 22.09.2011).

On the second point, the Court has reminded that art. 20 CPI prohibits the use of the own trademark “in the economic activity”, which is a wider concept with respect to the business activity.

The same Court of Justice ( C-236/08 of 23.03.2010; C 62/08 of 19.02.1010) had already affirmed that infringement of the trademark subsists when it is inserted in a business activity aimed at an economic advantage, from which the Supreme Court deduces that this is verified each time the use is not merely private.

Therefore, also the use of the trademark made by a supporters Club is a use that projects to the outside and whose services have anyway an economic value; therefore, such a use can only occur after express consent of the holder of the trademark.