With decision No. 32408 of November 3, 2022, the First Section of the Italian Supreme Court rejected Ferrari’s trademark and copyright infringement lawsuit against Brumm General Partnership (‘Brumm’) for having produced and commercialized Ferrari scale model cars without any authorization from the automotive company.
The litigation started before the Bologna Court of First Instance, which excluded the violation by Brumm of any intellectual property rights held by Ferrari. The Bologna Court of Appeal, with decision No. 2029 of June 15, 2016, reached the same conclusion on the grounds that the faithful reproduction of Ferrari scale models did not constitute a trademark infringement since there was no risk of confusion, nor any undue advantage. The Court of Appeal also dismissed Ferrari’s copyright infringement claim because the specific car model reproduced by Brumm was deprived of any artistic value to trigger copyright protection, as required by Art. 2, par. 1, lett. 10), of the Italian copyright law.
Ferrari appealed before the Italian Supreme Court, asking inter alia a preliminary reference to the Court of Justice of the European Union (‘CJEU’), pursuant to Art. 267 TFEU. However, the Italian Supreme Court considered this reference unnecessary because the CJEU had already handled a very similar case. Indeed, in Adam Opel1 , the CJEU dealt with Opel’s trademark infringement lawsuit against a miniature car toy manufacturer that had commercialized ascale radio-controlled model (1/24) in Germany of the Opel Astra V8 coupé, on the grille of which the Opel logo was affixed.
More specifically, the CJEU listed the cases in which a trademark holder that has been registered both for motor vehicles – in relation to which it is well-known – and toys can prevent third parties from affixing its distinctive sign on scale models of vehicles bearing that trademark:
(i) where the use affects or is able to affect the functions of the trademark as a trademark registered for toys;
(ii) where the use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trademark as a trademark registered for motor vehicles.
(iii) if the marketing of the aforementioned models does not constitute a use of an indication concerning a characteristic of those scale models, within the meaning of Art. 6, par. 1, lett. b), of the Directive 89/104/EC.
Based on these premises, the Italian Supreme Court held that the Judges correctly applied the principles established by the CJEU. According to the reasoning followed by the Bologna Courts of First and Second Instance, the faithful reproductions of the Ferrari vehicles by Brumm would not have caused any potential damage to Ferrari’s trademark, having instead evidence to the contrary. In particular, the Ferrari Gallery in Maranello showed some scale models of vintage Ferrari vehicles realized by Brumm. Moreover, several magazines, including “Ferrari World”, hosted some reviews of Ferrari scale models produced by Brumm. Therefore, it seems that Ferrari had repeatedly expressed a tacit consent to the exploitation of its trademark by Brumm, at least regarding the production and commercialization of scale models.
The Italian Supreme Court also found some shortcomings in the applicant’s pleading since it was limited to generally invoking an injury to the advertising and evocative function of its trademark without specifying the type of damage actually suffered. Nor there was any indication of the (allegedly) violated provisions as the claimant simply deduced the erroneous and false application of rules of law. Moreover, nor did Ferrari attached enough evidence to demonstrate how Brumm damaged the evocative function of its trademark. In a nutshell, the appeal would have been more likely to succeed if more detailed allegations had been made concerning the factual and legal background.
It seems reasonable to believe that the descriptive use of a trademark, pursuant to Art. 6, par. 1, lett. b), of the Directive 89/104/EEC, cannot occur if third parties intend to derive an undue economic advantage from its reputation. This is the case of the industrial production of scale model cars – even if for collection purposes – whereby the third party should obtain the right from the trademark holder through a license agreement. It is for the Courts of merit to ascertain if and to what extent the faithful reproduction of cars can be considered descriptive use of the corresponding trademark on a case-by-case basis.
 CJEU, judgment of January 25th, 2007, Case C-48/05, Adam Opel AG v Autec AG, EU:C:2007:55.