Despite Backlash, Ferrari May Benefit from Its Spat with Designer Philipp Plein

Luxury car maker Ferrari recently went after German fashion designer Philipp Plein after the designer posted images on social media of models and his own fashion products alongside Ferrari cars. Ferrari issued a cease and desist letter, which was posted publicly online, accusing Plein of using its trademarks to promote the designer’s own brand and tarnishing the Ferrari brand by making an “undesired connection” with Plein’s products. Plein responded to the letter in an online post, expressing his anger with Ferrari and its chief executive officer. World Trademark Review reached to Finnegan attorney Douglas Rettew for his insight on the situation.

While Doug believes Ferrari could take legal action against Plein for trademark dilution via tarnishment, he acknowledges that it may be an uphill battle. Similar to another claim that Mattel brought against an artist who created a series of photographs of Barbie dolls in unflattering positions, which were then displayed at art festivals, online, on postcards, and on business cards, the trademark dilution argument did not stand because the photos were for non-commercial use. Doug said, “Ferrari’s best claim is that its cars are being used to promote Plein’s sneakers and people will wrongly believe that the shoes are endorsed or approved by Ferrari. Ferrari has its own co-branded shoes with Puma, and it’s not uncommon for automobile brands to license their marks for apparel and footwear, so that’s not a stretch.”

The other aspect to this argument is whether Ferrari should move forward with its action, now that it has publicly called out Plein, or will the company risk its reputation from public criticism. Doug said, “Brand owners are wise to be ready to back up their threats and deadlines. But this obviously must be weighed against the possible public backlash that social media allows to proliferate with ease.”