Horse power

A small town in northern Italy is home to one of the world’s most endearing and glamorous brands: Ferrari. Head of IP, Micaela Cattaneo, tells Jo Russell how the car manufacturer races to keep ahead of counterfeiters

The small Italian town of Maranello is unmistakably Ferrari territory, and it’s impossible not to notice the presence of the great car manufacturer in the region. Its famous black prancing stallion logo, the Cavallino Rampante, is everywhere: in the cafés, the shops, the restaurants and of course the local museum dedicated to the company’s many sporting successes.

Maranello has been Ferrari’s home since 1943 (four years after it released its first car) and it is in one of the company’s many buildings that its legal department can be found; a busy office adorned wall-to-wall with Ferrari memorabilia.

Protecting Ferrari’s rights
For the majority of its 60-year history, Ferrari has worked hard to make its brand stronger by ‘winning motor races’ and ‘making very exclusive cars’. This simple combination is still Ferrari’s main point of focus, but like many others within the automotive industry, it has seized on the many opportunities presented by brand extension. ‘Since the 1990s in particular, this business area has brought a huge increase in IP activity,’ says Micaela Cattaneo, head of Ferrari’s IP and anti-counterfeiting division; particularly when it comes to policing the brand.

Michaela says she almost admires the ingenuity and the imagination of the counterfeiters who take up much of her working life: ‘I am amazed at some of the products they produce with our brand,’ she says. ‘Recently we saw a “Ferrari” quad bike on television. It had the Ferrari logo, our sponsors’ logos and the full livery of a Ferrari Formula One car, but it wasn’t ours!’

Attempting to second-guess the counterfeiters’ eagerness to cash in on the prestigious brand is just a part of Micaela’s diverse role at Ferrari. Her remit is IP Rights protection, which covers the registration, maintenance and enforcement of trademarks, design patents, domain names and copyright. She advises on drafts and reviews commercial agreements that might impact on IP Rights protection for the Ferrari brand, coordinates anti-counterfeiting activities (either directly or with a network of agents) and is in regular contact with the police, customs and enforcement agencies, maintaining a constructive working relationship with all interested parties.

It is a wide brief. ‘We have so many activities going on and I receive so many emails daily, that it can be overwhelming,’ says Micaela. ‘Typically, I could be involved with a seizure at customs, investigating a particular infringement case or even pursuing a person or company through criminal or civil proceedings. At the same time I might be reviewing a sponsorship agreement, or overseeing a media request for the use of one of our cars in a film.’

Micaela is supported by a consultant who works on the investigative side and spends the majority of his time in China and Thailand, where the counterfeiting problem is thought to be at its most serious. As Micaela points out: ‘Counterfeit goods are a worldwide issue, with ever more sophisticated worldwide production and distribution channels. It doesn’t make sense for us to focus on trying to seize five caps or some shorts. The best way to stop distribution is to stop production, at the source, and it appears that a lot of this is being done in China.’

However, when it comes to closing in on the counterfeiters, Ferrari’s IP team has a secret weapon and one which few other companies can boast: its fans.

Licensing for profit
As well as protecting the patents involved in the technology used to make some of the world’s most expensive cars, Ferrari has a highly profitable merchandising arm, producing everything from teddy bears to mobile phones.

Micaela joined Ferrari in 2001 at a time when brand protection was growing in importance. She explains that her brief has grown in line with the increased prestige and importance of the Ferrari brand. For example, in 2005, licensing activities were brought back under Ferrari’s direct control, so that the in-house team could also oversee the merchandising work. Ferrari’s IP team also has a dedicated lawyer in the US and South America, and another permanent member of staff in Italy, who along with Micaela, reports to Massimiliano Maestretti, head of the Ferrari legal department. Micaela explains that despite its global presence, Ferrari is no multinational: ‘We are not DuPont or Gucci. Our main product is automobiles, but we only make 6,000 of those a year. Our other business is selling merchandise through our stores, but that is done through our licensees, so we really don’t have large structures abroad.’

However, when it comes to closing in on the counterfeiters, Ferrari’s IP team has a secret weapon and one which few other companies can boast: its fans. A recent case concerned a Ukrainian bank using the image of a Ferrari car, but they had substituted their own logo in place of one of the existing sponsors. Micaela and her team soon began an investigation. ‘We were told about that through several different sources; the sponsors obviously, the Ukranian journalists who had noticed that something was not quite right, and our fans. The Ferrari fan clubs and owners clubs are quite active.’

The prancing horse
The famous symbol of Ferrari’s various motorsports teams is the black prancing stallion on a yellow shield, with the letters SF (for Scuderia Ferrari), with three stripes of green, white and red (the Italian national colours) at the top. It is one of the most famous logos in the world.

Yet brand recognition can only work so far, so part of Ferrari’s IP strategy includes educating its internal departments. ‘Our most important client is the commercial and brand department, with whom we have a lot of contact. It has very good knowledge of IP Rights, as does the communication department, which gathers information from newspapers, websites – all communication channels – and reports back to us on what it is seeing,’ says Micaela.

She is also determined to raise the general level of IP awareness throughout the company. ‘We are also setting up an intranet site with a section dedicated to IP Rights, and should have a part of the Ferrariworld.com website dedicated to  anti-counterfeiting in the very near future,’ she explains. External education is important, too. ‘We are investigating the possibility of offering police forces access, by registration, to information that will help them recognise our trademarks and original products country by country. We try, where possible, to run in-house training courses, but in countries where that’s not possible, we hope to develop the IP-dedicated intranet service.’

For more information on Ferrari, visit www.ferrari world.com


Trade Secrets?

The abuse and misuse of IP can even occur on the race track. In September 2007, McLaren formula one team made headlines around the world after the World Motor Sport Council found them guilty of possessing ‘highly sensitive’ and confidential information belonging to rivals Ferrari. They received a £42.9m fine and were stripped of their constructors’ championship points for the season. McLaren have decided not to appeal making Ferrari team champions for a record 15th time.


This article first appeared in IP Review, issue 20

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