23 October 2020TrademarksMuireann Bolger

Ferrari races to victory at CJEU

In a win for Ferrari, the  Court of Justice of the  European Union (CJEU) has ruled that the Italian company should retain rights to a German trademark of its Testarossa sports car, even though the production of the model has ceased.

In the decision handed down on October 22, the Fourth Chamber of the CJEU reversed the decision of a German High Court that sided with toy company, Autec AG, which wanted to register ‘Testarossa’ as a trademark.

Autec AG had claimed that because Ferrari had not been producing or marketing its  Testarossa car for more than two decades, it was fair and reasonable for the trademark rights to be relinquished.

The Ferrari Testarossa is a 12-cylinder mid-engine sports car, which went into production in 1984 as the successor to the Ferrari Berlinetta Boxer. Ferrari registered its ‘Testarossa’ trademark with the World Intellectual Property Organisation in July 1987, and replaced the Testarossa with the  550 Maranello grand tourer in 1996.

But the company argued that because it continued to manufacture replacement parts under ‘Testarossa’, its ownership of the disputed mark was still valid. It also pointed out that it had sold €17,000 euros ($20,000) worth of Testarossa parts between 2011 and 2016.

In 2018, the High Court in  Düsseldorf, Germany ruled, however, that this sum did not provide sufficient evidence of the “genuine use” of the earlier trademark. Subsequently, it ordered the cancellation of Ferrari’s trademark, “on the ground that, during a continuous period of five years, Ferrari had not made genuine use of those marks in Germany and in Switzerland, in respect of the goods for which they are registered”. Ferrari appealed against the decision before a higher regional court in Germany, which referred the case to the CJEU.

Consequently, the Luxembourg-based court this week reversed the 2018 ruling, holding that while the car itself hadn’t been manufactured since the 1990s, the company has continued to manufacture vehicle parts under the trademark. This meant that Ferrari continued to have rights to the disputed mark, according to the court.

“A trademark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark,” the five-judge panel wrote.

The panel stated that “taking the view that the use of a mark does not always have to be extensive in order to be genuine, and also taking into account the fact that Ferrari used the marks at issue in respect of high-priced sports cars which are typically only produced in small numbers,” that it did not share the view expressed by the German High Court “that the extent of use demonstrated by Ferrari is not sufficient to establish genuine use of those marks”.

The ruling noted that despite the relatively low number of product units sold under the trademark, “the use which has been made of that mark has not been token, but constitutes use of that mark in accordance with its essential function, a use which … must be classified as ‘genuine use’” .

The Testarossa was Ferrari's flagship model during the 1980s, making several appearances in pop culture, most notably in US crime drama “Miami Vice”.

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