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 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).
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?".