The European Union General Court, in its judgment in joined cases T-1103/23 and T-1104/23, annulled the decisions of the European Union Intellectual Property Office (EUIPO) that had declared the revocation of the verbal trademark TESTAROSSA of Ferrari S.p.A.
The case
The well-known car manufacturer had been declared to have lost its rights to the trademark because, for an uninterrupted period of five years, the sign had not been the subject of “genuine use” within the European Union for the products for which it was registered.
Addressing the issue, the EU Court first clarified that the concept of “genuine use” of the trademark, under European legislation, implies that the sign must be used in accordance with its essential function, namely to guarantee the origin identity of the products and services for which it is registered. It was also reiterated that, according to established case law, evidence of use of the sign cannot be based on mere probabilities or assumptions, but must be concrete and objective, proving genuine and serious use of the trademark in the relevant market.
Specifically regarding the TESTAROSSA cars (discontinued since 1996), Ferrari argued and demonstrated that the sales of used cars bearing the trademark, carried out by authorized dealers, occurred with its consent. Additionally, the “Prancing Horse” company showed that it provided these dealers, for a fee, with a certification service directly linked to the sales of used cars. Therefore, contrary to what was considered in the contested decisions, the Court affirmed that the sale of a used car bearing the TESTAROSSA trademark by an authorized dealer or distributor constitutes an indication that such sale takes place with the implied consent of the trademark owner.
The genuine use of the contested trademark was also demonstrated with regard to spare parts and accessories, again through the activity of authorized dealers and distributors, as well as through the certification service offered by Ferrari, which involved verifying the origin of the main components. The EU Court therefore concluded that the company had also given its implied consent for such uses.
Finally, with regard to miniature models, the Court noted that, where use is accompanied by indications referring to a licensing agreement with Ferrari, it should be perceived as use by the parent company or an economically connected enterprise. From the evidence provided by the Maranello-based company, it emerged that third parties had used the trademark along with the mention “official product under Ferrari license.”
According to the Court, this indication allows the inference of the trademark owner’s implied consent to the use of the sign and demonstrates that the TESTAROSSA trademark was used in accordance with its distinctive function, in a serious and genuine manner.
With this decision, by annulling the contested decisions, the Court established that Ferrari S.p.A. retains its exclusive rights to the verbal trademark TESTAROSSA.