This article has been written by Rhea Shah, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.
Table of Contents
Introduction
Ferrari, an iconic Italian brand, is arguably the world’s most well-known luxury sports car manufacturer. It is also closely associated with motorsport. Scuderia ferrari is the oldest and most successful team in Formula One history, having competed in every edition since the championship’s inception in 1950. However, Carlos Sainz was not the only ‘ferrari’ representative on the podium at the 2021 Monaco Grand Prix. Bottles of Ferrari Trento sparkling wine, named the Official Toast of Formula One this season, were present at the celebrations.
Ferrari Trento, founded in 1902 by Giulio Ferrari and run by the Lunelli family since 1952, is Italy’s leading traditional method winery. One of the most awarded producers of sparkling wine, it is a global leader in its field. Ferrari Trento has a rich history of collaborations with several sporting events.
The purpose of this article is to understand the distinction in the trademarks owned by these two namesake brands. This article will examine the difference in the classification of goods and services of these two brands as per the international system known as the Nice Classification. It will also investigate in brief, the concept of ‘deceptive similarity’ and its applicability in the present case. 
What is a trademark?
A trademark is a recognizable insignia, phrase, word, or symbol that denotes a specific product and legally distinguishes it from all other products of the same type. A trademark identifies a product as belonging to a specific company and acknowledges the company’s ownership of the brand.
Trademarks help distinguish products not only within the legal and business systems but also, and perhaps more importantly, with consumers. They are used to identify and protect words and design elements that identify a product’s or service’s source, owner, or developer. According to WIPO, “any distinctive words, letters, numerals, drawings, pictures, shapes, colors, logotypes, labels or combinations used to distinguish goods or services may be considered a trademark”. EUIPO’s website lists the types of trademarks that can be registered such as word marks, figurative marks, shape marks, position marks, pattern marks, and even multimedia and hologram marks.
The use of a trademark prevents others from using a company’s or an individual’s products or services without permission. They also prohibit any marks that could be confused with an existing one. This means that a company cannot use a symbol or brand name that is similar in appearance, sound, or meaning to one that is already on the books—especially if the products or services are related.
A primer on international trademark law
Trademark rights, like other intellectual property rights, are considered distinct in each country or jurisdiction in which they are obtained. Each jurisdiction has the right to recognize and protect trademark rights in a manner consistent with its policy objectives. Although the term “international trademark rights” refers to a set of trademark rights that exist in multiple jurisdictions, the existence and enforceability of these rights are unique to each jurisdiction and, in general, are not interdependent.
Despite differences in how trademark rights are recognized and enforced, many jurisdictions have agreed on common procedures or protocols for filing trademark applications. Several international treaties allow for the filing of a single application to register a mark in more than one jurisdiction.
A European Union Trade Mark (EUTM) registration protects a trademark in all European Union member countries (EU). The Madrid Agreement and Protocol allow for the filing of an application for an International Registration, which provides trademark protection in any of the jurisdictions designated by the applicant that are parties to either or both of those treaties. Under the Madrid system, it is necessary to use the Nice Classification, which is an international system for classifying goods and services established by the Nice Agreement and administered by WIPO.
Trademarks owned by Ferrari Automotive and Ferrari Trento
As per a Global Brand Database Search conducted on the WIPO IP portal, ferrari Automotive has a registered and active Italian trademark. It further possesses a registered and active European Union trademark as well as an international trademark for the word “ferrari”.
Similarly, ferrari trento also has a registered and active Italian trademark, European Union trademark, and International trademark for the word “ferrari”.
It is important to note that both companies own numerous other trademarks, including those for their logos and products. However, the focus of this article is solely on the trademark ownership of the name “ferrari”.
Differences in the trademarks owned by Ferrari Automotive and Ferrari Trento
As discussed earlier, a trademark helps in distinguishing the products of a company. It is therefore prohibited to use a trademark similar, and in this case, identical to an existing one. How is it then that Ferrari Automotive and Ferrari Trento both own registered and active trademarks for the word ‘ferrari’?
Different classes of goods under the Nice Classification
A trademark does not enjoy blanket protection. For example, if hypothetically ‘Toys-R-Us’ is only engaged in the business of selling toys, its trademark cannot prevent someone from using the same name in the apparel industry. Thus, two identical trademarks can exist for different types of goods and services.
The Nice Classification is an international system that provides a classification of goods and services for the purposes of trademark registration. It is the most popular classification system with approximately 150 offices around the world using it. For securing an Italian trademark, European Union trademark, or an international trademark, this system is applied.
Ferrari Automotive and Ferrari Trento have identical registered and active trademarks for the word ‘ferrari’ as it is registered under different classes of goods as follows:
- Ferrari Automotive – Class 12
Ferrari is a leading manufacturer of sports cars. It is also a prominent racing team. Hence, Ferrari Automotive’s trademark is registered under Class 12- “Vehicles; apparatus for locomotion by land, air or water” of the Nice Classification.
- Ferrari Trento – Class 33
Ferrari Trento is Italy’s leading traditional method winery and one of the most awarded producers of sparkling wine. Therefore, its trademark is registered under Class 33- “Alcoholic beverages, except beers; alcoholic preparations for making beverages”.
It is again pertinent to note here that the namesake brands are multinational companies with varied functions today. As a result, they own multiple trademarks registered under many different classes. The distinction brought about in this article is restricted to the core business employed by them, i.e., manufacturing cars and producing wine respectively.
What is ‘deceptive similarity’ and its applicability in the present case?
The term ‘deceptive similarity’ refers to a similarity between trademarks that could possibly deceive or confuse the public into believing that one mark is associated with another registered or well-known mark. Since trademark rights are territorial in nature, the stance on ‘deceptively similar’ trademarks varies in different jurisdictions. Both Ferrari Automotive and Ferrari Trento are based in Italy, and Italy is a member of the European Union, hence we will look into the stance of the European Union Intellectual Property Office on deceptive marks.
Article 7(1)(g) of the European Union Trade Mark Regulations discusses deceptive marks. As per this article, if the marks are of such a nature that they deceive the public, for instance, as to the nature, quality, or geographical origin of the goods, then such a mark shall not be registered. There must be actual deceit or the existence of a sufficiently serious risk that the consumer will be deceived.
In the case of Ferrari Automotive and Ferrari Trento, there is a clear distinction in the goods provided by them. There is no similarity in the goods provided since one company is manufacturing cars and the other is producing sparkling wines. Hence, a consumer of average intellect is unlikely to be confused about the goods offered by the two companies. Furthermore, there is the absence of actual deceit taking place on part of either company. It is for these reasons that the concept of deceptive similarity is not applicable in the present case and thus, Ferrari Automotive and Ferrari Trento have secured valid trademark registration in the European Union as well as valid international trademark registrations.
Conclusion
Ferrari Automotive and Ferrari Trento are two iconic Italian brands with a long and illustrious history. A recent collaboration between them took place in 2020, to celebrate Scuderia ferrari’s 1000th Grand Prix in Formula One.
The present article discussed how both these brands own identical, registered, and active trademarks for the word ‘ferrari’. This is possible as such registration is made under different classes of goods as specified within the nice classification. While Ferrari Automotive owns the trademark under Class 12, Ferrari Trento owns the trademark under Class 33.
In addition, this article provided a brief overview of the concept of deceptive similarity and examined its applicability to these trademarks. A clear difference in the kinds of goods manufactured by both companies exists. Thus, an average consumer will not be confused by the same. There is also an absence of any actual deception caused by either company. As a result, this concept would not be applicable.
References
- https://www.inta.org/fact-sheets/international-trademark-rights/#:~:text=The
- https://www.investopedia.com/terms/t/trademark.asp#:~:text=The%20term%20trademark
- https://www.mavenip.com/blog/why-where-when-foreign-trademark-applications/
- https://guidelines.euipo.europa.eu/binary/1922895/2004000000
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