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Image: Philipp Plein

Against the background of an already-contentious relationship between Ferrari and Philipp Plein, the Italian automaker has prevailed in a case it filed against the German designer and his oft-controversial fashion brand over the use of a Ferrari in Plein’s Spring/Summer 2018 runway show. As Luke Leitch wrote in his June 2017 review of the collection for Vogue, inside the Milan show space “was a bumper car stand and a pimp-ily painted Ferrari on the side as decoration.” Plein’s use of the mirrored-silver Ferrari – with flames painted on the sides and the word “Plein” adorning the hood – during the show and in subsequent advertising would give rise to litigation, with Ferrari arguing that Plein was creating an association between the two companies that does not exist and tarnishing its brand image in the process.

Fast forward to this week, and Ferrari has prevailed in its case. Despite Plein’s arguments that his brand was not merely making use of Ferrari trademarks, and in fact, also included Mercedes, Lamborghini and McLaren cars in the fashion show and subsequent promotion in order to “evoke scenarios of Hollywood films,” the Court of Milan has sided with Ferrari as first reported local publication Il Corriere della Sera, per WWD

According to a decision from a three-judge panel for the Court, Plein’s use of the Ferrari in his show and in subsequent advertising for his brand amounts to “illegitimate use of Ferrari trademarks.” As a result of the court’s findings, Il Corriere della Sera reports that Plein is required “to remove from any site and/or social media platform all images and/or videos showing Ferrari-branded cars relating to this event,” and is formally prohibited from making such use of Ferrari’s trademarks in the future (presumably regardless of whether the cars are his own). More than that, Plein is required to pay € 300,000 ($353,542) plus legal fees to Ferrari. 

The decision comes amid an enduring legal battle between the two, as Ferrari filed a separate trademark-centric suit against Plein for using images and videos of one of his Ferraris along with footwear from his eponymous label. The imagery – which depicted a limited edition pair of Plein’s $800-plus PHANTOM KICK$ sneakers sitting atop of his $350,000-plus green Ferrari 812 Superfast – aim to create a connection between the two brands for the benefit of the Plein brand, according to the cease and desist letter that counsel for the Italian automaker sent to Plein in July 2019 (and that Plein shared with his 2 million personal Instagram followers).

The same argument is at the center of the lawsuit that Ferrari filed against Plein thereafter. By featuring his products alongside Ferrari’s wildly famous trademarks, including the Ferrari name and prancing horse logo, Plein used Ferrari’s legally-protected marks “for promotional purposes of [his] brand and products,” and thereby, “unlawfully appropriating the goodwill attached to them,” counsel for Ferrari argued in the complaint that it filed with the Court of Genova. 

In February, the Italian court sided with Ferrari, affirming – in an appeal – that the images and a corresponding video that Plein posted on Instagram do, in fact, run afoul of European Union and Italian trademark law. The problem for Plein, according to the court, is that such images, which feature his footwear “positioned on the body of a [Ferrari] car … may lead consumers to believe that Ferrari brand is in some way connected to [the Philipp Plein] brand” when no such affiliation exists. 

This potential for consumer confusion is “reinforced,” according to the court, by the fact that the color of Plein’s products, namely, the green sneakers, is “almost the same” as the color of the car, which could prompt people to believe that there is “an association between the two companies and their products.” 

The court was unpersuaded by Plein’s counsel’s earlier argument that the designer/influencer-of-sorts was well within his right to post the imagery featuring his cars, as the photos are not commercial in nature, but instead, a reflection of Plein’s lavish lifestyle. Addressing that assertion, the court recognized that the depiction of one’s personal life on social media will almost inevitably include his/her consumption habits, and therefore, will feature the distinctive signs of consumer goods brands. However, the court held that “the use of third-parties’ trademarks by an influencer” (well-known fashion designers like Plein presumably fall within the court’s definition of “influencers”) is “considered lawful only when such use is authorized by the owner of the distinctive trademark, or when the images are descriptive of life scenes of the influencer or of third persons,” and are not merely being used for “commercial or advertising purposes.” 

In Plein’s case, the court determined that the purpose of the photos and the designer’s use of Ferrari’s valuable trademarks in those photos is commercial. Taken together, the images and the corresponding marketing messaging in the captions alerting consumers of where Plein’s shoes could be purchased “can only be explained as existing for the purpose of advertising” and bolstering the appeal of the Philipp Plein brand and its products by way of an association with Ferrari. 

With that in mind, the court held that Plein’s use of Ferrari’s trademarks is unlawful. As for the corresponding video, which depicted bikini-clad women washing and dancing on the car with the sneakers readily in sight and with a caption that referenced the footwear, the court held that it demonstrated the “incompatibility” of the Ferrari and Plein brands, and that Plein’s use amounts of the Ferrari marks in such a way give rise to dilution of the Ferrari marks by tarnishment. 

As of this summer, that case was still underway, and Plein took the matter to social media urging Ferrari to agree to settle the scuffle, and asserting that he was “exhausted and tired of fighting [with Ferrari] especially in this particular moment [when] it is completely inappropriate to fight over such unimportant issues!!!!”

In a June 5 letter addressed to Ferrari CEO Louis Camilleri, which Plein subsequently posted to his Instagram account, a representative for the designer called on the car company to “settle once and forever all the pending legal disputes and waive all claims and appeals in exchange for the commitment of Mr. Plein to donate in the name of Ferrari Group and Plein Group the sum of $200,000.” In connection with the letter, Plein stated that Ferrari had allegedly demanded $2 million from him in connection with the aforementioned trademark suit – a sum that Plein claims that he “negotiated” down to $200,000.  

Ferrari did not comment on Plein’s letter, nor does it appear to have settled the suit.