Horses for courses as F-dispute is 'wheely' settled

Looks like a Ferrari,
handles like a Ford ...

While tytoc collie prefers to prowl around on foot, he has noticed that many bipeds -- perhaps because they have so few legs -- prefer to travel by other means.  Some opt for quadrupeds, of which the horse was once the most popular choice, while others nowadays prefer wheels.  Those who buy Ferraris are presumably  unable to choose between the two, since the Ferrari is the epitome of the horse on wheels: it has a horse for its logo and its weblog is curiously entitled The Horse Whisperer. Possibly Ford aficionados have the same cast of mind since Ford's brand models include the decidedly equine marques Mustang and Bronco.


A few weeks ago tytoc collie's friend Kingsley Egbuonu reported on the dispute between car-makers Ford and Ferrari as to whether the latter's F150 mark infringed the former's F-150.  As has been spotted by some readers, there have been further developments.  As Kingsley explains: 

On 3 March, ferrari.com's The Horse Whisperer announced that Ford has withdrawn its lawsuit, adding the comment that “.....common sense has prevailed”. The text continued as follows:

”In order to avoid the slightest risk of anyone confusing a Formula 1 car with a pick-up truck, for their part, the men from Maranello have decided that the car will lose the F that precedes the number 150 and which stands for Ferrari, as it has done on numerous occasions when it’s come to giving a car a code name, be it for the race track or the road. It appears that this could have caused so much confusion in the minds of the consumer across the Pond that, at the same time as losing the F, the name will be completely Italianised, replacing the English “th” with the equivalent Italian symbol”.

”Therefore the name will now read as the Ferrari 150° Italia, which should make it clear even to the thickest of people that the name of the car is a tribute to the anniversary of the unification of our country. Let’s hope the matter is now definitely closed and that we can concentrate on other matters, namely ensuring that our car that already seems to be pretty good out of the box, becomes a real winner”.

Kingsley's comment

We have many times been guilty of criticising a person who enforced rights enshrined in law; for instance, under human rights law or in this case, IP law. If this were to be the norm, then we might as well replace all laws (including IP) with “common sense” and live in a world of commercial anarchy. When Ferrari claims the support of the Court of Public Opinion with the expression “common sense”, my guess is that it implies “what is reasonable” -- which is what judges deal with in a court of law.

An early Ford people-mover

Arguably, Ferrari may owe some of its own commercial success and fame to IP rights -- which do exist for a reason. The majority of old and successful companies that are still with us today have always vigorously protected their trade marks; while some (notable) trade mark owners have on occasion been too slow to react to IP threats, or have failed to monitor and enforce their rights.

Just like anyone else, trade mark owners (even Ferrari) must remember the need to conduct due diligence checks before making any commercial branding decision, and there is nothing wrong with IP owners taking appropriate legal action as the last resort, provided their action is not vexatious or frivolous.

Call Ferrari’s press release what you may: insulting, cheeky, condescending, (right or wrong). Other companies may do the same.  Perhaps a better PR approach would have kept Ferrari's response short -- using just the first paragraph, less the last sentence. After all, it may not be long before Ferrari finds itself in Ford’s shoes".

Horse whisperer here
Hoarse whisperer here

On the road again, with two more F-marks

Ferrari F150

Earlier today tytoc collie 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?".