On 18 January 2018, Phillips
Ormonde Fitzpatrick filed an
application on behalf of Ferrari to
register its 488 Pista vehicle design.

The 488 Pista is an updated model
of the ‘488’ family of designs. Upon
examination of the application, the
Examiner asserted the 488 Pista
was not distinctive because it
was substantially similar in overall
impression to several publications
depicting the older Ferrari 488
Spider vehicle. Written submissions
were filed in response to the
examination report in which key and
prominent features were argued to
be distinguishing. In a subsequent
examination report the Examiner
maintained that the similarities
between the respective designs
were ‘very clear’. The 488 Pista
Design was considered a ‘refinement
of the existing designs’ and not
substantially different in overall
impression to the 488 Spider.

Top: Ferrari 488 Pista Spider,
Above: 488 Spider
A request for a hearing was
subsequently filed and the matter
was heard on 19 March 2020. Chris
Schlicht, Alexis Keating and Peter
Wassouf were involved in
the preparation of hearing
submissions and represented
Ferrari in the hearing.

Hearing Decision
The Ferrari hearing submissions
included a declaration from Anthony
Moss, a founder and director of
Ultimate Driving Tours (UDT). Anthony
has extensive experience in the
automotive and prestige car industry,
and in his role with UDT coordinates
luxury car tours around the world.

In the submissions it was argued that
the 488 Pista design relates to a sub-
category of performance vehicles,
and that a skilled and informed user
possesses a detailed understanding
of the features relevant to a car’s
performance. With a highly developed prior art
field, the Hearing Officer agreed with
Ferrari’s submission that an informed
user of performance vehicles
appreciates differences that may
otherwise be considered subtle.

In considering the similarities and
differences between the designs,
the Hearing Officer considered the
designer’s freedom to innovate. It
was acknowledged that cars do
contain inherent features, such
as wheels, doors, bonnets and
mirrors, and these features restrict
a designer’s freedom to innovate.

The Hearing Officer acknowledged
that in the field of performance cars
the informed user would appreciate
there were specific performance
parameters which dictate the design
of certain aspects of a vehicle, thus
providing further functional design
constraints. It was found that the
informed user would apportion more
weight to areas where the designer
has freedom to innovate, which in
this specific case was the front and
rear section of the vehicles.

In considering the comprehensive list
of differences submitted by Ferrari,
it was found that substantial visual
differences existed in the front and
rear of the 488 Pista vehicle design
compared to the 488 Spider prior art
vehicle. For example, an air damn and
air scoop running through the front
bumper and up through the bonnet of
the 488 pista, which did not appear in
the prior art citations was considered
to be a prominent difference. The air
damns and the wrap around diffusers
in the rear of the 488 Pista were also
considered prominent and distinct
features. The substantial visual
differences in combination with
other minor differences identified
by Ferrari were in combination held
to significantly alter the overall
impression of the 488 Pista.

With the benefit of a declaration
made by a skilled and informed
user, Ferrari was able to support
its submissions and overturn the
Examiner’s original objections.

Such declarations are not restricted
to hearings, and we encourage
Registration owners to consider filing
declarations during the examination
process if an Examiner maintains
certain distinctiveness objections.

Our Designs Team at Phillips
Ormonde Fitzpatrick are here to
assist you with the prosecution
and management of Australian and
international design applications.

Please do not hesitate to contact
us should you have any questions
relating to Design protection in
Australia or overseas.

Peter Wassouf | Associate
B.Eng (Mech) (Hons), B.Bus JD MIPLaw
peter.wassouf@pof.com.au Inspire October 2020
Background With a highly
developed prior art
field, the Hearing
Officer agreed with
Ferrari’s submission
that an informed
user of performance
vehicles appreciates
differences that
may otherwise be
considered subtle.

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