Genuine use in the EU: Ferrari v EUIPO (TESTAROSSA)

Background

The EUIPO has recently upheld Ferrari’s appeal and annulled the Board of Appeal’s decision in relation to genuine use of the EU word mark TESTAROSS.

Ferrari S.p.A. has been the owner of the EU word mark TESTAROSSA since 2007 for Class 12 and Class 28.

In 2015, Autec AG filed applications to revoke the TESTAROSSA mark on grounds of non-use between the relevant period, i.e., 2010 to 2015. The EUIPO ruled that Ferrari had not made “genuine use” during this period and therefore revoked the mark.

Issue

Ferrari appealed the decision. In short, dealers and distributors in Italy, Germany, Belgium, France and Spain had been selling second-hand Testarossa models during the relevant period.

The crux of the appeal was ascertaining whether the sale of used cars through authorised dealers was sufficient to constitute genuine use of the trade mark.

Decision

In quite a concise decision, the Court agreed with Ferrari and held that second-hand sales of Testarossa cars by authorised dealerships or distributors can constitute genuine use, even if Ferrari did not produce new models during the relevant period. This is because such sales were deemed to been made under implied consent from Ferrari.

Briffa Comment

The verdict reaffirmed that trade mark protection will subsist even if new production has ceased during the relevant period so long as the brand (i.e., TESTAROSSA) stays present through authorised channels. This ruling is significant for luxury brands, where second-hand markets are economically crucial and continue without new production. It provides a roadmap for such brands to maintain brand continuity.

We recommend that brand holders ensure that legacy brands maintain active roles in their ecosystem by having active licensing and collaboration activities in place with authorised resellers.

The litigation landscape for trade marks is rapidly evolving and is one that Briffa is well placed to assist with, having assisted clients in the trade mark litigation space for 30 years.

Written by Kemal Tayyareci – Solicitor