Diana Ferrari (Australia) Pty Ltd v Ferrari SpA

Diana Ferrari (Australia) Pty Ltd (Diana Ferrari) sought interlocutory relief against Ferrari SpA (Ferrari SpA) to restrain the latter from using the Ferrari name and logo in relation to the sale of women's footwear in Australia. Diana Ferrari, an Australian company, had been using the name "Diana Ferrari" for its footwear business since 1984 and had registered trade marks for this name and associated logos. Ferrari SpA, an Italian manufacturer of luxury sports cars, had been using the "Ferrari" name and prancing horse logo globally for many decades. In 2014, Ferrari SpA began to explore the possibility of expanding its brand into women's fashion footwear in Australia, which led to the present proceedings in the Federal Court of Australia.

The primary legal issue before the court was whether Ferrari SpA's proposed use of the "Ferrari" name and logo in relation to women's footwear in Australia would infringe Diana Ferrari's registered trade marks. This involved a consideration of whether the goods were of the same description or closely related, and whether there was a likelihood of deception or confusion among consumers. The court also had to determine whether Ferrari SpA's use of the name and logo would amount to passing off, given Diana Ferrari's established reputation and goodwill in the Australian market for footwear.

Justice Greenwood considered the evidence presented by both parties regarding the nature of their respective businesses and the potential for consumer confusion. The court applied the principles of trade mark infringement and passing off, focusing on the likelihood of consumers believing that Diana Ferrari's footwear was in some way connected with, or endorsed by, Ferrari SpA, or vice versa. The judge found that while both parties used the name "Ferrari," the distinctiveness of Diana Ferrari's brand, coupled with the different classes of goods and target markets, meant that there was no substantial risk of deception or confusion. The court noted that consumers were unlikely to associate luxury sports cars with women's footwear, and vice versa, in a way that would suggest a trade connection.

The court therefore dismissed Diana Ferrari's application for interlocutory relief, finding that it had not established a sufficient likelihood of success on the merits to justify the grant of an injunction.