Influence or advertising?
The court of Genoa marks the boundary between commercial and non-commercial use of well-known trade marks by influencers
28 September 2020
The Court of Genoa ruled on the requirements under national and European law as to the use of a well-known trade mark by third party influencers. In its decision published on 4 February 2020, the Court of Genoa overturned its previous interim decision issued on 2 December 2019, ordering the eponymous German fashion house Philipp Plein to stop the unlawful use of the well-known “Ferrari” trade mark, and delete from the designer’s Instagram profile posts published in violation of the Italian IP Code and the EU Regulation on trade marks.
Factual background and Ferrari’s complaints
In July 2019, Ferrari (the famous Italian car manufacturer based in Maranello) filed an urgent petition before the Court of Genoa, seeking interim measures to prevent the German fashion house from engaging in the unlawful use of the Ferrari brand.
Ferrari’s complaints concerned a video published on the designer’s Instagram page, which depicted a limited edition pair of “Phantom Kick$” sneakers created and marketed by the German designer sitting on the bonnet of his green “Ferrari 812 Superfast”. The video recording involved a car wash with women in skimpy outfits and the sneakers placed on the bonnet of the car. In both cases the Ferrari “prancing horse” logo was evident in the foreground and a commercial caption was included on the side.
According to Ferrari, by featuring his products alongside Ferrari’s highly famous trade marks, including the Ferrari name and logo, without Ferrari’s authorization, Philipp Plein used Ferrari’s well-known trade marks for commercial and promotional purposes of his brand and products and thereby unlawfully appropriated the goodwill related to them.
The Court of Genoa rules on how to identify a commercial use of a trade mark by influencers
In a preliminary remark, the Court of Genoa highlighted that the position of the sneakers on the car, both of which were green, may lead consumers to believe that the Ferrari brand was in some way connected to the Philipp Plein brand, while no such affiliation exists.
The Court recognised that the German designer’s conducts breached article 20(1)(c) of the IP Code and Article 9(2)(c) and section 3(e) of EU Regulation no. 2017/1001 (the “EU Trade Mark Regulation”), pursuant to which the owner of a registered trade mark has the right to prevent third parties from using in the course of trade, without his/her consent, any sign which is identical with or similar to the registered trade mark (even in relation to goods or services which are not similar) where the registered trade mark has a reputation in the territory and where the use of the sign (without due cause) takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
The Court rejected the designer’s arguments that, as an influencer, he merely exercised his right to post imagery featuring his cars in such a way that the photos were not commercial in nature, but instead, a reflection of his lifestyle.
The Court held that the use of third-parties’ well-known trade marks by influencers is lawful only when (i) it is expressly authorised by the owner of the well-known trade mark, or when (ii) the images are descriptive of life scenes of the influencer or of other people, but not merely being used for commercial or advertising purposes. In this case, the Court stated that the purpose of the videos posted on Instagram by the designer and the designer’s use of Ferrari’s trade marks only pursued commercial purposes in the absence of Ferrari’s authorisation to do this.
According to the Court, the pictures – which depict Philipp Plein’s branded shoes with the Ferrari logo – and the corresponding marketing messaging in the captions alerting consumers of where the shoes could be purchased could only be explained as existing for the purpose of advertising. Placing shoes on the hood of a car does not describe a moment in life: “there is no doubt that the image of some shoes displayed on the hood of a car does not describe a moment in the life of anyone (a moment that can be the act of eating, resting, walking, celebrating, talking, etc.), especially given that placing shoes on the hood of a car does not have any practical justification”.
Moreover, the Court recognised that the posts of the designer constituted a type of dilution by tarnishment of Ferrari’s trade mark: this occurs when the use of the trade mark by third parties decreases the aura of luxury acquired on the market by the well-known trade mark.