August 7, 2019
World Trademark Review
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.”
Media Mention
Women in Business Law Americas Awards 2024: Three Finnegan Attorneys Shortlisted
April 7, 2024
Press Release
Finnegan and BMW Group Successfully Demolish Non-Practicing Entity NorthStar’s Efforts
April 3, 2024
Award/Ranking
Managing IP Americas Awards 2024: Finnegan Shortlisted for Nine Awards, Including Firm of the Year
March 12, 2024
Commentary
February 29, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.