by Jeremy Erwin , Ross Magee September-02-2020 in Commercial & Business, Intellectual Property

A recent decision of the European Intellectual Property Office (“EUIPO”) may cause concern for car manufacturers seeking long term protection of the shape of their designs. The case concerned a challenge by Ares Design, an Italian car manufacturer, against a trade mark held by Ferrari over the design of Ferrari’s legendry 250 GTO. Only thirty-six 250 GTOs were produced between 1962-1964 and it is estimated they sell at private auction for around €50 million each.

Modena based Ares Design successfully argued that the trade mark registered by Ferrari in 2008 for the design of the 250 GTO had been filed in bad faith and its only purpose was to block third parties from producing similarly designed sports cars. They relied on Article 58(1)(a) European Union Trade Mark Regulations (“EUTMR”) which states that a European Union trade mark may be revoked if, for a continuous period of five years, it has not been put to genuine use. It is not the first set back for Ferrari, who lost the rights to exclusively use the famous Testarossa name to Autec AG, a German toy manufacturer, in a 2017 court case.

Article 58(1)(a) EUTMR has also played a key role in the long running intellectual property dispute between McDonald’s and Supermac’s. In a judgment delivered by EUIPO in January 2019, Supermac’s successfully argued that McDonald’s had not proven genuine use of its “BIG MAC” trade mark as a burger or restaurant name. One aspect of genuine use of a trade mark can exist where it is used by the holder of a trade mark to guarantee the identity of the origin of the goods. However, despite McDonald’s producing brochures and marketing material, the EUIPO was not satisfied that McDonald’s had shown a genuine use of the “BIG MAC” trade mark, resulting in the registration of that trade mark being revoked.

The EUIPO issued a further decision in August 2019 following another challenge by Supermac’s which resulted in McDonald’s losing its “MC” trade mark in relation to a number of goods and services across the European Union. The time for McDonald’s to appeal the decision expired earlier this year, which means McDonald’s is now only entitled to use the “MC” trade mark in relation to sandwich products and chicken nuggets.

The Ferrari and the “BIG MAC” decisions confirm that EUIPO will not accept the mere presence of a trade mark as sufficient grounds of genuine use. If you are the holder of a trade mark, either in Ireland or the EU, it is essential to keep a record of the mark being put to genuine use.

If you would like further information on any of the issues raised in this article, please contact Jeremy Erwin or Ross Magee

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