For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 17 February 2011

On the road again, with two more F-marks

Ferrari F150
Earlier today the IPKat posted this item on a battle between two F-1 trade marks, of which the better known was that of the unsuccessful Formula One motor racing operation.  Today the Kat can bring you another automotive dispute involving an F-mark, thanks to Kingsley Egbuonu (Queen Mary, University of London), who has prepared this little piece for your delectation:
Brand publicity or genuine protection of the “F-150” trade mark?

As reported in the Guardian on Wednesday of last week, Ford Motor Co filed a suit against Ferrari for infringing its “F-150” trade mark. The complaint filed by Ford in the US district court in Detroit reads: "Ferrari has misappropriated the F-150 trademark in naming its new racing vehicle the 'F150' in order to capitalise on and profit from the substantial goodwill that Ford has developed in the F-150 trademark," said a complaint filed by Ford Motor Co in the US district court in Detroit.  
Ferrari responded:"Ferrari believes that its own contender in the forthcoming F1 championship cannot be confused with other types of commercially available vehicle of any sort whatsoever, nor can it give the impression that there is a link to another brand of road-going vehicle," a statement said. "Despite this and to further prove it is acting in good faith ... Ferrari has decided to ensure that in all areas of operation, the abbreviated version will be replaced at all times with the full version, Ferrari F150th Italia."
Ford F-150
Ford also filed under the Anticybersquatting Consumer Protection Act (ACPA, 15 USC §1125), for Ferrari’s use of F150 as part of its domain name. However, Ford would have to prove that ferrarif150.com was registered in bad faith as the Italian giant raced to rename it as ferrarif150thitalia.ferrari.com in an attempt to prove good faith (see Mayflower Transit, L.L.C. v. Prince, 314 F. Supp. 2d 362 (D.N.J 2004), here). Ford is therefore suing for irreparable harm suffered; claiming unspecified damages and injunctive relief (see The Times here). 
Kingsley's comment 
In the motor industry, it is common practice for manufacturers to affix their brand name before any characters; for example BMW X5; Jaguar XF; Fiat 500. In this case, it may be asked whether the average (relevant class) consumer would confuse Ford’s F-150 with Ferrari’s F150, bearing in mind that, nowadays, car enthusiasts are more likely than not to refer to models (i.e. X5) as indication of origin other the brand itself (i.e. BMW). So is there a case for Ford here?  Note also that on 28 January Ferrari announced on F1’s website the launch of the F150 contender for the 2011 F1 season “named to mark the 150th anniversary of Italy’s unification”, Ferrari claims.

The terms used to associate Ferrari’s F150 include 'aerodynamic' and 'singleseater' while Ford’s F-150 is associated with terms like 'strongest backbone', 'towing confidence no other truck can touch', 'built for rough/tough action'.  This being so, the court would have to find likelihood of confusion by using consumer surveys between FerrariF150 and Ford F-150. 
In the US, the eight factors in Polaroid Corp. v Polarad Elect. Corp., 287 F.2d 492 (the Polaroid test), are widely used by the courts in assessing likelihood of confusion in consumers. These include the strength/reputation, actual confusion, quality of goods, similarity and proximity of goods in the market place. In other cases, such as In re E. I. du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563, relevant factors include classes/types of consumers, connotations and visual appearance.
This publicity may generate resentment towards the Ford brand, as that company could be perceived as riding on F1’s popularity or Ferrari’s reputation in F1 to publicise its new F-150 truck. Regardless, this shows that trade mark/brand owners are obliged and/or should ensure that they monitor and enforce their registered and unregistered trade mark rights.

In respect of brand extension and merchandising, Ford may argue that it needs to protect the “F-150” to this effect. But neither an official Ford F-150 website offering the F-150 trucks nor its merchandise was displayed on search engine with the keyword “Ford F-150”. This is obviously a big inconvenience for Ferrari as the 2011 season begins in March, hence their willingness to attempt to settle. On the other hand, one might wonder why a cease and desist letter failed to put this matter to bed in the earliest opportunity, as Ford claimed. 
If this suit were to proceed, the court might have had some fun considering (i) whether the marks  were sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks was likely to result, and (ii) whether Ferrari took the necessary steps to alleviate confusion and prevent injury to Ford’s alleged goodwill?".

8 comments:

Dr Mark Summerfield said...

I would have thought the court might also have some fun trying to figure out whether there has been any relevant trade mark use by Ferrari in any event.

Since I cannot actually go out and buy a Ferrari F150, and nobody at Ferrari has so much as suggested that I could ever do so, it is a little hard to imagine how I could ever become confused with the Ford F-150.

Of course, the US law has interesting features relating to matters such as reputation and dilution, which probably allow Ford to rattle their sabres a little louder than they could in other jurisdictions.

But seriously, where is the damage? 'Well, you honour, it was only when I got my new F-150 home that I realised it didn't have the cargo-carrying capacity I had expected, that it didn't handle well off-road, and that it lacked the mechanical reliability I have come to expect from Ford. Obviously I was really angry with them about this, although I did tell them how much I liked the sporty new look and striking red colour!'

Pamela Chestek said...

Not sure how you searched, but in the US the Ford F150 is a famous household name for a pickup truck, probably the most well-known of all of them (perhaps it was the hyphen that threw off your search - in mine, the official Ford webpage for the truck is the first result and the entire first page of Google search results are about the truck). From the US perspective, there's no way that we would think Ford is riding on Ferrari's coattails, it's easily the other way around (we like our pickups). This is a "what on earth could Ferrari have been thinking!" case from a US perspective, where Ford is about 100 times more famous than Ferrari.

Anonymous said...

I think the relvant question on customer confusion would be whether the Ferrari 150 comes with an optional gunrack.

Dave said...

Let's not forget that Ford and Ferrari have a rather tumultuous history - Ford attempted to buy Ferrari, and after prevaricating for a while Enzo Ferrari decided not to sell as a result of a dispute over terms. Ford had spent a lot of money on the deal and decided that, if they couldn't join 'em, they could at least beat 'em. The Ford GT40 was born of that desire for vengeance, and went on to win at Le Mans four times in succession (1966-1969), ending a six year run of success for Ferrari.

They've never seen eye-to-eye since...

Anonymous said...

Both clunkers have in common that they guzzle at least 150% more Fuel than necessary. The brand is descriptive.

Jeremy's search result may have been partially influenced by his location.

Luca said...

Wouldn'it be correct to think that F150 is so much a famous truck that it actually risks to incurr vulgarization in the U.S. just like Bayer's Aspirina did?
Hence, Ford may have taken the occasion and boosted this case with a view to preserve F-150's ditinctive character.

Anonymous said...

Ford's complaint is hilarious. Somebody should forward it to Jeremy Clarkson, considering his views on Detroit's products and his own rather tumultuous relationship with some of Ford's finest.
And just imagine: a comparative track test of the F150 and the F-150 in Top Gear...

Dr Mark Summerfield said...

I'd love to see that track test... with Clarkson in the Ferrari and new Stig in the Ford! Considering the size of an F1 cockpit, it might actually be a fair contest.

Incidentally, an F1 engine when driven in a race has about 10 times the fuel consumption of a fairly economical small car when driven carefully (about 70 litres/100km versus about 7 litres/100km). But heavy traffic or agressive driving will push your small-car consumption well above this. Indeed, in a congested city you would be doing well to get 7litres/100km out of a Prius.

An F1 engine also has around 10 times the power output of a small four-cylinder road car. Overall, for what they do, they are spectacularly efficient (unlike, I would imagine, the Ford F-150).

The environmental problem with the F1 series is not the racing itself, which is a fantastic R&D lab for new technologies, but rather the huge circus that goes on world-tour every year. It is about to touch down here in Melbourne, and every team, with its vehicles, equipment, staff/crew and entourage will be flown in to spend about a week before taking off to do it all again somewhere else a fortnight later. Ridiculous!

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':