Ferrari Keeps Testarossa: Second Hand Sale is Genuine Use
Actualizado: 20 oct 2021
The Court of Justice of the European Union (CJEU) has decided on the case C-720/18 that Ferrari can retain their “Testarossa” trademark even though this model is not being manufactured anymore.
In a recent ruling of particular relevance to companies in the automotive sector, the CJEU also confirmed that car manufacturers can rely on evidence from the sale of second-hand vehicles to demonstrate the “genuine use'' of the trademark. It also considers that the service of maintenance and sale of spare parts also represents genuine use of said brand.
EU trademark law provides for the possible cancellation of trademarks in the event that the rights holder cannot demonstrate trademarks are being put into 'genuine use'. These provisions are intended to prevent companies from having a monopoly on the brands they do not use in the market.
In this case, the CJEU had to consider whether Ferrari had put its 'Testarossa' trademark into 'genuine use' after being challenged in a German proceeding. This procedure pointed out that Ferrari stopped selling cars under that name in 1992, and only uses the brand in a very specific segment, luxury vehicle parts.
However, the CJEU considers that in general, a trademark should be considered to have been put in 'genuine use' in relation to all products "within the category of products that has been registered", including cars, even if only using, for example, in the sale of spare parts.
The CJEU also said that, under EU trademark law, a trademark is genuinely used by its owner when that owner resells second-hand goods placed on the market under that trademark. This is exactly what Ferrari does today with the Testarrosa brand: providing spare parts and maintenance to vehicles that have already been sold.
This decision is very positive for those companies with iconic products that have ceased to be manufactured. The risk of losing their brands due to lack of use will be much lower.
The full decision can be read here.
Adrian Esquivel Vargas
Esquivel & Martin Santos
Trademark, Patent and IP law firm in Spain