World famous sports car manufacturer Lamborghini has been involved recently in two intellectual property related procedures with contrasting outcomes.
The first of these procedures concerned a complaint lodged with the WIPO Arbitration and Mediation Centre by Automobili Lamborghini Holding S.p.A, the holding company of the Lamborghini Group but now wholly owned by Audi AG, regarding the registration by a third party of the domain name lamborghini.tv. The third party in question was Unity 4 Humanity Inc. The Lamborghini Group has rights in many countries in the Lamborghini marks and enjoys the benefit of a worldwide reputation.
Unity 4 Humanity asserted that it was running a legitimate online business stating that ".tv is a qualifier in the market of on-line sharing of video clips and synonymous with the respondent itself and its business model". It also argued that Lamborghini is a common surname and therefore lacked distinctiveness. The Panel did accept Unity 4 Humanity's argument that Lamborghini was a common surname but went on to state that this would not prevent it from acquiring distinctiveness through usage. The Panel held that the term .tv is not distinctive on its own and therefore that lamborghini.tv was confusingly similar to the well-known Lamborghini mark.
On investigating the use of the domain name, WIPO discovered that the website at lamborghini.tv did not contain any content which discussed or related to Lamborghini and that in fact it directed users to Unity 4 Humanity's other website on which various web services were advertised. In addition, the website to which users were directed featured a prominent advertisement for the TV channel of one of Lamborghini's rivals. Unity 4 Humanity tried to argue that it was in the process of developing a .tv channel and that there was no time restriction placed on such development and that this therefore established fair use. The Panel rejected this argument, found that there was a lack of any legitimate non-commercial or fair use purposes for the use of the domain name and held that the domain name had been registered in bad faith. The Panel accordingly ordered the transfer of the domain name to Lamborghini.
The second incident in which Lamborghini was less successful was an attempt by it to gain a trade mark over its distinctive swivel opening doors on its Diablo model. The application was rejected by OHIM on the basis that it lacked distinctive character. Lamborghini appealed this decision to the Board of Appeal. The Board of Appeal upheld the decision on the grounds that what Lamborghini was attempting to register was, in effect, merely a shape designed to obtain a technical effect and because other car manufacturers already commonly used a similar design, it was no longer unique to Lamborghini.
Lamborghini may have had contrasting outcomes in these two examples but they also serve as examples of how alert brand owners need to be these days to monitor the use of their brand online and take appropriate action and also to highlight the innovative thinking and the lengths that brand owners will go to in order to gain valuable protection for the distinctive elements of their brand.