The Ferrari judgment from the Court of Justice of the EU (‘CJEU’) was a real head scratcher (IPKat here and me here). The Court held that the use of a trade mark for the sale of exhausted goods can constitute genuine use. The judges did not stop there but also found that the use for component parts of those goods as well as goods or services directly connected with the goods previously sold and intended to meet the needs of customers of those goods are also sufficient to show genuine use of the trade mark for the goods.

The General Court recently applied this case law to Ferrari’s ‘TESTAROSSA’ trade mark, which has not been used for new cars for quite some time (case T-1103/23).

Background

In 2006, Ferrari obtained International Registration for ‘TESTAROSSA’ designating the EU for various goods in classes 12 (including ‘vehicles; apparatus for locomotion by land, air or water; land motor vehicles, automobiles, structural and replacement parts, components and accessories therefor all included in this class’).

In 2015, an individual filed an application for revocation of Ferrari’s trade mark based on non-use. The Cancellation Division of the European Union Intellectual Property Office (‘EUIPO’) revoked Ferrari’s trade mark with the exception of ‘automobiles’. Upon appeal by both parties, the EUIPO’s Board of Appeal (‘BoA’) revoked the ’TESTAROSSA’ trade mark in its entirety. It found that Ferrari had not established consent to the sale of second-hand cars by its dealers.

Ferrari filed an action with the General Court.

The General Court's Decision

The General Court upheld Ferrari’s appeal and annulled the BoA’s decision.

Use for cars

It was undisputed that the Testarossa models were sold between 1984 and 1996 but not during the relevant period for establishing genuine use (2010 to 2015). Likewise, the parties agreed that dealers and distributors in Italy, Germany, Belgium, France and Spain sold second-hand Testarossa models during the relevant period.

The central question was whether the sale of used cars through authorized dealers was sufficient to constitute genuine use of the trade mark. The judges quoted the CJEU’s Ferrari judgment, according to which

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 General Court argued that this finding was supported by the doctrine of exhaustion (Art. 15(1) EUTMR). It shows that a trade mark applied to goods, which have been put on the market, can still be put to use, i.e. the mark can be used by third parties and the proprietor. This is irrespective of whether the trade mark owner can prohibit the use or not.

Further, the use with the trade mark owner’s consent constitutes genuine use (Art. 18(2) EUTMR). Ferrari relied on implied consent. The Court held that the trade mark owner’s consent must be expressed so that an intention to renounce the exclusive rights in the mark is unequivocally demonstrated. Such intent may be inferred from facts and circumstances prior to, simultaneous with or subsequent to the use of the mark by a third party.

Ferrari had submitted invoices from authorised Ferrari dealers for second-hand Testarossa models. The Court found that the contractual link between Ferrari and the authorised dealers included at least implied consent to the use of Ferrari’s trade marks, even though the dealership agreements did not mention the ‘TESTAROSSA’ trade mark.

To support this finding, the judges referred to the common practice in the car market. Cars are usually branded with the manufacturer’s mark (i.e. ‘Ferrari’ and the prancing horse) and a model designation (i.e. ‘Testarossa’). The Court inferred that an authorised distributor or dealer is deemed to be authorised to market all of the manufacturer’s car models and use the respective trade marks.

The Court furthermore highlighted that the Testarossa models are vintage collectible luxury high-end models, which are particularly esteemed and valued by collectors. The Court considered it well-known that the sale by an authorised dealer serves to indicate the car’s commercial origin and reassures customers that the maintenance of the car and any replacement of parts and accessories have not been carried out in such a way as to affect its commercial origin.

For these reasons, the Court upheld Ferrari’s claim that they had consented to the sale of second-hand Testarossas by their authorized dealers.

Beyond that, Ferrari submitted invoices for services offered in Italy, Switzerland, the Netherlands and the UK, certifying that a car is a genuine Testarossa. The BoA had dismissed this evidence because it also showed the “Ferrari” trade mark. The judges recalled that a trade mark need not be used in isolation (i.e. without any other marks) as long as the trade mark is still perceived as an indication of origin. This was true for the ‘TESTAROSSA’ mark, which was also mentioned on the invoices.

Since, according to the CJEU’s Ferrari decision, genuine use of a specific good can also be established by showing use of the mark for services which are directly connected with the goods and intended to meet the needs of customers of those goods, the judges held that the BoA had erred in dismissing the evidence for the certification services.

Use for parts and accessories

The BoA had disregarded Ferrari’s evidence intending to establish use for parts and accessories of cars in the appeal brought by Ferrari because it was deemed to be filed out of time. However, the BoA took that evidence into account in the appeal brought by the revocation applicant.

In Ferrari’s appeal, the BoA merely argued that “in view of the poor evidence discretion [could] not be exercised in favour of [Ferrari]”.

The Court did not find this reasoning sufficient to explain why it disregarded Ferrari’s evidence under Art. 95(2) EUTMR.

Also, the judges deemed the BoA’s decision contradictory insofar as it dismissed the evidence in Ferrari’s appeal but reviewed it in the revocation applicant’s appeal.

Turning to the evidence submitted by Ferrari on the use of ‘TESTAROSSA’ for parts and accessories of cars, the Court found that it was undisputed that authorised dealers had sold parts and accessories labelled as ‘genuine [Testarossa] parts’. Ferrari also submitted invoices from dealers with numerous references to parts and accessories sold under ‘Testarossa’. This was sufficient to show the nature of use of the contested trade mark.

Additionally, the BoA rejected Ferrari’s argument that the sale of parts for cars can constitute use for cars themselves. The judges found this to be erroneous. The CJEU held in the Ferrari judgment that the use of a mark for replacement parts forming an integral part of the goods covered by that mark is capable of constituting genuine use not only for the replacement parts but also for the goods the replacement parts are intended.

Comment

The General Court applied the Ferrari doctrine as established by the CJEU and added that the sale through authorized dealers can be sufficient to show genuine use.

In order to mitigate the risk of relying on implied consent, the dealership agreements should contain clauses authorizing the dealers not just to use the main brands (e.g. ‘Ferrari’ and the prancing horse) but also the model designations (e.g. ‘Testarossa’) and any trim level name (to the extent protected as a trade mark) also for used cars. 

Source: https://ipkitten.blogspot.com/2025/07/general-court-sale-of-second-hand.html