Since 2007, the well-known Prancing Horse car manufacturer has owned the “TESTAROSSA” trademark for cars, spare parts, accessories, and miniature models. Between 2016 and 2017, the trademark was hit by two applications for revocation for non-use brought by third parties, which the EUIPO (European Union Intellectual Property Office) upheld, asserting that Ferrari had forfeited its rights to the “TESTAROSSA” trademark as it had not been put to genuine use in the EU for the products for which it was registered in the five-year period 2010/2015. 

Ferrari challenged the EUIPO first instance decision, and subsequently the ruling of the EUIPO Board of Appeal, which partially confirmed the first instance ruling regarding the genuine use and the scope of the revocation, then appealed to the General Court of the European Union which, with the recent Judgment published on July 2nd in joined cases T-1103/23 and T-1104/23, annulled both decisions of the EUIPO Fifth Board of Appeal of August 29th 2023, citing the following reasons.  

First of all, the Court better specified the concept of “genuine use” of the sign. Generally speaking, according to established case law, genuine use of a trademark exists when it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered, publiclyand on the market. Evidence of use of the sign cannot consist of probabilities or suppositions, but must be concrete and objective, proving effective, serious and sufficient use of the trademark on the market concerned. 

The Court, referring to established case law, further added that, in assessing the actual use of the trademark, it is also necessary to take into account the usual practices of the economic sector concerned in order to maintain or create market share for the goods or services protected by the trademark, the nature of such goods or services, the characteristics of the market, and the extent and frequency of use of the trademark.  

Regarding the Ferrari Testarossa cars, the debate focused on the fact that these models – just under 10,000 units – were built from 1984 to 1996, when production ceased and the second-hand market developed, with dealers or distributors authorised by Ferrari selling them. In this regard, the Court noted that the use of the trademark in its primary function of indicator of origin with respect to the sale of second-hand products may constitute genuine use, even if carried out by third parties; in fact, the resale of cars by third-party authorized dealers/distributors is recognized as having been carried out with the implicit consent of the trademark owner. Furthermore, in the course of the proceedings, Ferrari had demonstrated that certain dealers had sold some of the “Testarossa” models by providing a certification service for the authenticity of these vehicles.  

Therefore, the Court recognized both that the sale of used cars entailed an actual use of the trademark and that Ferrari, implicitly, had consented – as the owner of the sign – to such use.  

With reference to the spare parts and accessories The Court ruled that, in this case too, the sale of such parts through authorized dealers, also carried out with the aid of verification and certification of their origin, constituted an effective use of the sign with Ferrari’s implicit consent.  

Finally, with regard to the miniature models, the Court argued that the affixing of the TESTAROSSA trademark to such products by third parties is lawful only and exclusively where it has the purpose of indicating that it is a faithful reproduction of an authentic car. On the other hand, where the use is accompanied by indications that refer to a Ferrari licensing agreement, it will be perceived as use carried out by the parent company or by a company economically linked to it.  

From the evidence provided by Ferrari, it emerges that the use by third parties was carried out with the mention “official Ferrari licensed product,” and therefore the TESTAROSSA trademark was used in accordance with its function, in a serious and effective manner. Moreover, this indication, in the Court’s opinion, suggests the owner’s implicit consent to the use of the sign.  

Thus in this latter case the Court annulled the BOA’s decision and remanded the caso to EUIPO so as to allow a new BOA to determine whether the evidence was adequately was proffered as regard to the place, time and  extent nature of use since the Board of Appeal confined itself, in the contested decision, to assessing the nature of the use of the contested mark (cf. at §§ 35 e 74). Regardless from how the BOA will then decide these cases, the aforementioned rulingsallow a broad interpretation of the notion of “actual use”, something that is advantageous especially in markets characterised by long life cycles or “re-use” processes, such as those of luxury cars. For owners of historic and particularly well-known brands, such as Ferrari, this decision is a tool for combating attacks on trademarks for forfeiture due to non-use and allows them to protect themselves even when production of the goods ceases but their marketing continues with second-hand products.  

It can therefore be defined as a visionary and modern pronouncement, which recognizes the peculiarities of certain markets and at the same time allows iconic brands to protect themselves from attempts at usurpation.