Reproduction of a trademark of others on model cars: the decision of the Court of Cassation

The Italian Supreme Court of Cassation, by order no. 32408 of 7 July 2022, rejected the appeal brought by the well-known Maranello car manufacturer stating that the faithful reproduction of its classic car models not only does not infringe any industrial right or copyright but it does not represent also an act of unfair competition.

The judgement of first instance is of the same opinion, then confirmed also by the Court of Appeals of Bologna with ruling no. 2029 of 15 June 2016.

The judge of second instance, in fact, considered that the faithful reproduction of the car model in smaller scale, bearing the trademark of the team in plain sight, did not represent an unlawful use of the trademark under exam, as there was not any confusing effect because the reproduction of the sign aimed only at a faithful reproduction of the original cars.

According to Bolognese court, moreover, the actor could not even benefit from copyright protection, due to the lack of artistic value of its own cars reproduced as models.

The well-known car manufacturer appealed against such judgment by presenting an appeal before the Court of Cassation and stating, among other issues, that the scaled-down model, once removed from its packaging, bore only the car team trademark creating a confusion relating to the source of origin.

Moreover, the actor observed that the Court of appeal, in recalling the law principle referred to in the judgment of the Court of Justice in the proceeding ‘C 48/05 Adam Opel Ag and Autec AG’ analyzed only the distinctive function of the trademark, having the purpose to ensure consumer of the origin of the production, neglecting to examine however the other functions of a trademark, especially if it is well-known such as the evocative, investment and advertising function.

The Supreme Court, entrusted with the issue, considered groundless the reasons of the appeal.

First of all, it observed that the court of appeal had correctly applied the principles of law elaborated by the European judgment: the plaintiff company only invoke generically the occurred infringement of the advertising and evocative functions of the known trademark without indicating the juridical rules which would have formed object of infringement and without even attaching the adequate elements to refute the thesis of the Bolognese Judge relating the use of the trademark in a non-evocative function.

Moreover, the Judge highlighted that faithful reproductions bearing the trademark of the car team did not cause any prejudice, not even potential, to the car manufacturer.

As a matter of fact, some models of the defendant are exposed in the gallery of the plaintiff in Maranello, besides being published in trade magazines, hence the use of the sign by the defendant would not in any way have damaged the known “cavallino” trademark.

In conclusion, the faithful reproduction of scaled-down car models does not constitute an unlawful use of the trademark of the Maranello company, as there has not been any confusing effect nor a professionally unfair conduct by the defendant.

Finally, the appeal of the actor was rejected.


Giulia Mugnaini