Ferrari sues Malaysian energy drink firm over alleged logo trademark infringement

By Arjun Mohanakrishnan

Italian luxury sports car manufacturer Ferrari S.p.A is suing a Malaysian company for alleged trademark infringement pertaining to the logo of an energy drink.

According to court documents sighted by Scoop, Ferrari was made aware of a trademark application in February 2016 by Sunrise-Mark Sdn Bhd for an energy drink named “Wee Power”.

In an affidavit dated July 22 this year, Ferrari legal counsel Paolo Lorenzi said that his company proceeded to object to Sunrise Mark’s intellectual property application in April 2016 with the Malaysian Trademarks Registrar.

Ferrari’s opposition was on the grounds that Wee Power’s trademark features a logo of two horses in the rearing position, which is similar to the sportscar manufacturer’s symbol.

“The word Ferrari is an Italian surname but (also functions) as a trademark today in various industries (especially automobiles, racing cars and participation in car races). The trademark is synonymous with the opponent (Ferrari S.p.A) on a global scale, including Malaysia.

“The opponent’s mark has been used extensively and continuously for many years worldwide, including in Malaysia for various goods.

“The opposed (Sunrise-Mark Sdn Bhd) mark is confusingly similar from a visual and conceptual aspect when compared with the opponent’s mark.

“This is because both of them are visual representations of a horse or horses in motion,” Ferrari’s objection to the Trademarks Registrar reads.

Despite Ferrari’s objections, on April 29 the Trademarks Registrar ruled in favour of Sunrise-Mark.

Among the Trademarks Registrar’s reasons cited for dismissing Ferrari’s objection include the fact that the words “Wee Power” on the logo are sufficient to distinguish itself from Ferrari’s trademark.

Further, the Trademarks Registrar also noted that Ferrari’s products are also different from Sunrise-Mark.

Dissatisfied with the Trademarks Registrar’s decision, Ferrari filed a suit at the Kuala Lumpur High Court to challenge the ruling.

“The decision of the Malaysian Trademarks Registrar contains material and serious errors which could set an unhealthy precedent of allowing traders with improper motives to take and appropriate a well-known trademark like the Plaintiff’s (Ferrari) trademark and add extra elements to it with minor adjustments and modifications made and then claim ownership to the said trademark,” Lorenzi’s affidavit said.

Following the court’s e-filing system, the matter was set for case management on September 3, and no new dates have been set yet.