Ferrari S.P.A. v. Grupo TecnoFerrari S.p.A.

The notice of opposition was not defective although in the part invoking Art. 8(5), it did not mention goods in Class 12 among those covered by the earlier TM. The information contained in form & annexes indeed showed that the opposition pursuant to Art. 8(5) was based on the same earlier marks as cited for Art. 8(1) but for different goods (Class 12), and the exchanged statements and contested decision showed that the Office and applicant itself did correctly interpret the opponent's intention. The prefix 'TECNO' has little distinctive character bearing in mind the sector in question; the dominant component (FERRARI) is the same in both marks. Therefore there is a general impression of similarity. The national law allowing to continue use of the earlier mark only aims to preserve a right of use acquired at national level and cannot be used to obtain the grant of a different right, namely a CTM. TECNOFERRARI benefits from the image of high technology and luxury of the highly famous mark that FERRARI is, and transfers it to the sector of ceramic coverings and industrial machinery. The public who buys these articles will think they have the quality and prestige of the car in question. Ceramic coverings and industrial machinery in the building industry generate a feeling of annoyance with the general public and suggest undesirable mental associations in respect to luxury sports cars. Consequently, the use of TECNOFERRARI to distinguish these goods tarnishes the FERRARI trade mark. The fact that there was no objection against the national registration of TECNOFERRARI, against its use for machinery & ceramic coverings in Italy & Germany and for sponsoring Formula-1 teams for 4 years, does not remove the unfair advantage taken nor the tarnishment. The fact that the FERRARI-component in TECNOFERRARI refers to the surname of the founder and president of the company, is irrelevant given this custom in Italy, and does not constitute a 'due cause'. The appeal is dismissed.