Brief introduction to the case and the proceedings before the UIBM
This article focuses on the legal dispute between Automobili Lamborghini S.p.A., a well-known car manufacturer, and Elettra Lamborghini, the granddaughter of the company’s founder, Ferruccio Lamborghini, who is also a famous pop music artist.
On May 2nd, 2019, Ms. Elettra Lamborghini filed a trademark application with the Italian Patent and Trademark Office (UIBM) to protect her patronymic (“Elettra Lamborghini”) for products and services belonging to Nice Classes nos. 3, 9, 18, 25 and 41, including cosmetics, handbags and clothing.
On December 5th, 2019, Automobili Lamborghini S.p.A. filed an opposition against said trademark application, invoking its earlier rights to the word trade mark “AUTOMOBILI LAMBORGHINI” and the figurative trade mark "
The UIBM ricognised that the earlier trademark “AUTOMOBILI LAMBORGHINI” is well-known and therefore benefits from ultra-merchandising protection.
In this regard, it should be noted that, under Article 12 of the Italian Industrial Property Code (“IPC”), the owner of a well-known trademark can prohibit third parties from using an identical or similar sign, even if there is no identity or similarity between the products associated with the two signs, and even if there is no risk of confusion.
The opposition filed by Automobili Lamborghini S.p.A. was upheld under Article 12(1)(e) IPC, and the registration of the “Elettra Lamborghini” trademark was consequently refused due to the lack of novelty.
However, Ms. Elettra Lamborghini appealed against the decision to the UIBM Appeals Board, requesting its annulment on the grounds that the conditions set out in Article 12(1)(e) IPC had not been met. On the other hand, Automobili Lamborghini S.p.A. claimed that the contested decision should be fully confirmed.
In a ruling issued on April 16th, 2024, the UIBM Appeals Board upheld Elettra Lamborghini’s appeal and overturned the UIBM’s original decision. The Board recognised that the “Elettra Lamborghini” trademark had acquired notoriety in the music industry independently of the notoriety associated with the earlier trademark “Automobili Lamborghini”.
The Board argued that the name “Elettra Lamborghini” could be registered as a trademark under Article 8 IPC and that the singer's use of her patronymic would not constitute an unfair exploitation of the distinctive character and reputation of the earlier trademark “Automobili Lamborghini”.
The order issued by the Italian Supreme Court
Automobili Lamborghini S.p.A. appealed against the decision issued by the UIBM Appeals Board to the Italian Supreme Court, pursuant to Article 360 of the Italian Code of Civil Procedure.
The Supreme Court, by order no. 18675, published on July 8th, 2025, upheld the appeal in its entirety. The contested ruling was overturned and the case was referred back to the UIBM Appeals Board for a new ruling on the matter.
Firstly, the Supreme Court stated that the contested judgment failed to adequately assess the similarities and differences between the products and services covered by the trademarks, as well as the risk of confusion.
According to the Supreme Court's order, the Board wrongly conducted a “concrete” assessment to determine whether the contested sign exploit the distinctive character or reputation of the earlier trademark. The assessment should instead have been conducted “in the abstract”, taking into account the intensity of the reputation, the distinctiveness of the trademark, the similarity between the signs being compared, and the proximity of the goods or services (see EU Court of Justice, February 28th, 2019, C-505/17, P. Groupe Léa Nature vs EUIPO; EU Court of Justice, November 27th, 2008, C-252/07, Intel Corporation).
Furthermore, the Supreme Court stated that, pursuant to Article 12(1)(e) IPC, the “due cause” (“giusto motivo”) requires that the trademark application (i.e. “Elettra Lamborghini”) had been used in good faith prior to the earlier trademark (i.e. “Automobili Lamborghini”).
According to the Supreme Court, the UIBM Appeals Board’s judgment failed to verify the existence of this specific condition.
Brief conclusions
The Supreme Court's ruling sets a significant legal precedent in the dispute between the singer and show business Ms. Elettra Lamborghini and the company Automobili Lamborghini S.p.A.
This decision establishes important legal principles for interpreting the “due cause” set out in Article 12(1)(e) IPC.
The UIBM Appeals Board must now rule again on the validity of the “Elettra Lamborghini” trademark, taking into account the principles set out by the Italian Supreme Court.
The outcome will clarify whether the personal notoriety of the name “Elettra Lamborghini”, acquired in a different sector to that of the earlier trademark, can constitute “due cause” as defined in Article 12(1)(e) IPC.
Article published in today's Lexology Newsletter, written by our partner Massimo Baghetti and our associate Leone Cei.