In September 2018, Ares Design Modena S.r.l. (“Ares”), a Modena-based coachbuilder, announced that it would produce and commercialise a modern replica of the Ferrari 250 GTO, based on the Ferrari F12 Berlinetta chassis. The article, published by luxury-lifestyle magazine RobbReport.com, included drawings of the soon-to-be-commercialised sports car that slavishly reproduced the iconic features of the Ferrari 250 GTO.
Ferrari S.p.A. (“Ferrari”) – represented by the Italian law firm Orsingher Ortu – decided to take action in order to stop the advertising, reproduction and potential commercialization of the Ares model: in October 2018, Ferrari filed an application for interim injunction against the company on the grounds of free-riding, unfair competition, and copyright and trademark infringements.
In particular, Ferrari claimed that a number of legal principles had been deliberately violated by Ares:
- Article 2598 of the Italian Civil Code (prohibiting the undue exploitation of the appeal and reputation of a third party),
- Article 9 of the EU Trademark Regulation (conferring to the trademark’s proprietor certain exclusive rights, such as preventing all third parties without consent from using any sign -identical or similar to the one already registered under EU law – to promote products which are identical or similar to those connected with the registered trademark),
- Article 4 of Legislative Decree No. 145/2007 (relating to transparency and correctness in comparative advertising), and
- Articles 2 n. 10, 13, 16 and 18 of the Italian Copyright Law (Law No. 633/1941) according to which copyright protection (such as the exclusive right to reproduce, modify, elaborate and communicate to the public the protected work) is granted to industrial design works which maintain creative and artistic value.
The first Court rejected Ferrari’s claims. It found that, compared to the Ferrari 250 GTO, Ares’s new model presented significantly different elements (such as, the dimensions of the wheels, the vehicle height, the different shape of the headlights and the presence of Ares’s logo); thus, the judge concluded that Ares model was not an infringing copy of the Ferrari 250 GTO.
Ferrari challenged the above decision on the grounds that the first judge had addressed claims related to trademark infringement only; copyright infringement should also have been considered. Ferrari argued that the creative and artistic value of the Ferrari 250 GTO had played a big part in its challenge: created in collaboration with Carrozzeria Scaglietti and with only 36 copies having been produced (39 including the ones with a cylinder-capacity of 4000 cm3) between 1962 and 1964, the sports car is often compared to a work of art; so much so that last year the press reported James Knight as saying: “The Ferrari 250 GTO is the motoring market’s equivalent of Van Gogh’s ‘Sunflowers,’ and a talisman for any top-end collection”. This view of the car as a work of art seems to be supported by the market: last August, a Ferrari 250 GTO sold for USD48,4 million at Sotheby’s Monterey.
The Tribunal of Bologna (acting as judge of second instance) recognised that the Ferrari 250 GTO does have artistic value, as it is considered an icon in the automotive sector. The Tribunal also accepted that copyright infringement, on the one hand, and trademark infringement, on the other, are different claims that should be considered separately. While the key element of trademark infringement is the likelihood of confusion by customers of the identity of the producer of the goods, copyright infringement must be assessed by reference to whether or not the goods constitute the illegal reproduction of a copyright-protected work.
In this case, the Court found that the Ares’s drawings represented an unlawful copyright infringement of the Ferrari 250 GTO: the only differences between the two cars were components needed in order to modernise the vehicle (due to technological developments and improved security standards). In other words, the Tribunal found no original and creative features in the drawings distinguishing the Ares car from the Ferrari 250 GTO.
In addition, the Court held that Ares’s communication towards the public (conducted through various marketing and advertising initiatives) was directly aimed at appropriating Ferrari’s iconic standing, reputation and historical values.
Consequently, the Tribunal of Bologna, in granting interim measures, ordered Ares to: (i) stop disseminating the contentious drawings, (ii) stop the production, commercialisation, promotion and advertising of the infringing car, (iii) refrain from referring in any way to Ferrari (and/or to Ferrari cars) in its business communication, and (iv) bear all relevant legal costs.
The dispute is not over yet as it will return before the Tribunal of Bologna on 28 November 2019. In the proceedings on the merits, the Tribunal shall decide if the interim injunction is to be upheld and determine the compensation in favour of Ferrari (if any).
 Managing Director of Bonhams UK and Group Chairman of the Motoring Department.