A trademark is revoked if it is not used for a period of time – usually for five years – after its registration.
On the basis of this principle, in Germany it was requested the cancellation of the trademarks “Testarossa” owned by Ferrari S.p.A. and registered for goods in class 12 for the supposed lack of genuine use.
At first, the German Judge stated that the use of the trademarks was not of such nature to constitute a serious and genuine use and this because Ferrari had used the trademark to identify maintenance services and accessory parts of its cars but in a too small scale.
The Maranello car company appealed against the decision before the Higher Regional Court of Düsseldorf, which decided to suspend the proceeding and to submit to the European Court of Justice many preliminary questions on the genuine use of a trademark asking in particular:
- (i) If one has to take into account the market for the registered category of goods overall – in this case land vehicles, in particular cars and parts thereof – or the particular market segment – in this case high-priced luxury sports cars and parts thereof;
- (ii) If the sale of used goods which have already been released onto the market by the trade mark owner in the European Economic Area constitutes use of the trademark by the trademark owner;
- (iii) If, with regards to the trademark that is registered not only in respect of a product, but also in respect of parts of that product, it detects the sale of accessories and replacement parts bearing that trademark even though the product is no longer on sale;
- (iv) If, when assessing whether there is genuine use, one has also to considered that the trademark owner, even without using the trademark, offers specific services intended for the goods already sold;
- (v) Lastly, which party must bear the burden of the proof related to the genuine use of the trademark.
The European Court of Justice (CJEU) with sentence 22nd October 2020 for the joined Cases C–720/18 and C–721/18 ruled that even a use limited to a specific segment of the relative market (in this case high-priced luxury sports cars and parts thereof) constitutes a “genuine use” suitable to prevent the revocation of the trademark for the class considered, unless the products in question are perceived by the consumer as an independent subcategory of the one in respect of which that trademark was registered.
In the case considered, in the opinion of the Court, the category of car cannot be sub-divided into independent subcategory of cars.
With regards to point (ii), the Court stated that the fact that the owner of the trademark cannot prohibit third parties from using its trademark in relation to goods which have already been put on the market under that trademark does not mean that he cannot use it for the same goods. Therefore, “a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark”.
The Court also ruled that the provision of certain services connected with the goods previously sold under that trademark can represent a genuine use of the trademark, on condition that those services are provided and identified with that trademark.
In light of all considerations above, the referring judge shall decide if the trademark “Testarossa” is to be considered effectively revoked or if it remains valid.