Do you have to worry about trademark issues when you resell a homebuilt replica of, say, a Ferrari Daytona Spyder? In a recent case about this question, the Dutch District Court of The Hague ruled that a reseller did infringe Ferrari’s trademark rights. But contrary to what Ferrari demanded, the kit car did not have to be destroyed.
A kit car is a self-built vehicle, the body of a well-known car model built on the chassis, with the brakes and engine, of an ordinary middle-class car. In the case at hand, the kit car was described as a Ferrrari Daytona Spyder, or at least a structure reminiscent of a Ferrari Daytona Spyder, built on the chassis of a Chevrolet Corvette C3.
A Dutch kit car dealer imported the car form the United States and put it up for sale on a Dutch online marketplace. Car manufacturer Ferrari had the car seized. Not only because the marks on the steering wheel, the hubcaps and the front and rear of the car allegedly infringed on Ferrari's trademarks (e.g. the famous Cavallino Rampante, the ‘prancing horse’), but also because the appearance of the car infringed on Ferrari's copyright with regard to the design of the Daytona Spyder.
The court ruled that the kit car was not identical to the original Spyder model and that Ferrari had not made it sufficiently clear that, despite the differences found, the kit car produced a similar overall impression. Ferrari’s claim of copyright infringement was therefore dismissed.
However, the kit car did infringe Ferrari’s trademark rights. Although the images submitted to the court were not entirely clear, it was clear to the Court that the ‘little horse’ depicted on the kit car "corresponds with or is at least very similar" to the EU-trademark registration of Ferrari. The fact that the marks on the steering wheel and on the hubcaps were not visible in the online advertisement was deemed to be of no importance. The marks were visible in the showroom of the seller, and that alone amounted to infringing use in the course of trade. The fact that some of the marks were taped over with duct tape could not alter that conclusion.
The destruction of the entire car would perhaps have been an obvious decision in the event of infringement of Ferrari’s copyright on the design of the Spyder, but now that only trademark infringement had been proven, the Court considered destruction to be too harsh a measure. After all, the infringing marks could easily be removed and the penalty imposed was considered to be a sufficient means of preventing the marks from being reapplied to the kit car.
In short: the defendant gets the kit car back, under the condition that he will remove the marks from the car within two working days and destroys them permanently. The bailiff who has to be present at the removal and destruction, will thereupon send his report of the removal and destruction to the lawyers of Ferrari. After that, the kit car can be sold again.