Published article in WTR Daily (12 December 2013)
With decision n. 26498/2013, issued on November 27, 2013, the Italian Supreme Court upheld the appeal proposed by Ferrari SPA in a trademark infringement dispute started in 1998 and overruled the Court of Appeal’s decision.
The contested Court of Appeal’s decision considered as legitimate the use of well-known Ferrari trademarks (prancing horse logo and the long ‘F’ of Ferrari) made by an unofficial Ferrari owners’ association, the “Ferrari Club Milano” on the basis of the following grounds:
i) The acquiescence of Ferrari: the use of the Ferrari marks made by Ferrari Club Milano was authorized and legitimated by Ferrari SPA from 1978 to 1986. From 1986 on Ferrari Club Milano changed from being an authorized to an unofficial group but until 1998 continued the (unauthorized) use of these trademarks and Ferrari SPA did not challenged and did not file any action against Ferrari Club Milano and such use.
ii) The use of the Ferrari trademarks made by Ferrari Club Milano was not considered as a commercial activity since the car club is a no-profit organization without commercial nature. The use of the Ferrari trademarks was therefore considered with a mere descriptive function.
In the decision of November 27, the Supreme Court rejected both of the above arguments stating that:
i) the acquiescence in the use of a later trademark can only operate, according to the Italian Law, in relation to registered trademarks. The fact that Ferrari SPA was aware of the use of non-registered trademark made by Ferrari Club Milano cannot, therefore, prevent Ferrari SPA (as owner of the trademark) from the possibility to bring action against that use. The Italian Law clearly indicate that the owner of an earlier trademark who acquiesced (being aware of such use) for a period of 5 years, in the use of a later registered trademark is not entitle to claim the invalidity of the mark. No validation for acquiescence of a non-registered mark can be claimed and no legal actions can be barred due to a possible acquiescence of the use of an unregistered trademark.
ii) As to the second grounds, the Supreme Court confirmed that the possible infringement of a trademark cannot be excluded by the circumstance that the use is made by a no-profit/non-commercial entity. In this regards, the Supreme Court explained that a infringer can be also an association that simply provides services with an economic value.
On the basis of the above, the Supreme Court sent back the case to the Court of Appeal of Milan.