This article first appeared in World Trademark Review Daily

In Ferrari SpA v EUIPO (Case T‑1103/23), the General Court has annulled an EUIPO Board of Appeal decision rejecting Ferrari’s evidence of genuine use of its famous TESTAROSSA mark. The ruling provides crucial clarification on the legal standard for genuine use in the context of spare parts and use by third parties. The court offered a nuanced and pragmatic interpretation of trademark use in the luxury automotive sector, with broader relevance to industries where spare parts and long product lifecycles are
common.

Background

Ferrari’s TESTAROSSA mark had been challenged on grounds of non-use. The EUIPO Board of Appeal found that Ferrari had not used the mark for “automobiles” during the relevant period, but only on spare parts and accessories sold mostly by third parties. It considered that use either had been insufficiently proven or was merely descriptive – namely, it was intended to denote compatibility, not origin.
Ferrari appealed to the General Court, arguing that the use of the mark on genuine spare parts, often through authorised dealers, constituted genuine use of the mark, both for parts and for automobiles.

Decision

The General Court first addressed the EUIPO’s conclusion that third-party use of the mark – primarily by the company Maranello – could not be attributed to Ferrari. The Board of Appeal had considered Maranello and other dealers as independent traders, thus excluding their activities from the scope of Ferrari’s trademark use.
However, the court found this assessment flawed. Ferrari had submitted extensive evidence showing economic and contractual links with Maranello, which had exclusive distribution rights for Ferrari parts for pre-1995 vehicles. The materials included invoices, marketing references and certification services, all of which implied consent from Ferrari.
Express authorisation was unnecessary; use by economically linked entities sufficed under the case law.
The General Court noted:

“The Court of Justice has held that the use, by or with the consent of its proprietor, of a registered trademark in respect of replacement parts forming an integral part of the goods covered by that mark is capable of constituting ‘genuine use’, within the meaning of Article 51(1)(a) of Regulation 207/2009, not only for the replacement parts themselves but also for the goods covered by that mark.“

A core issue was whether use of the mark on parts alone could amount to use for the broader category of ‘automobiles’. The EUIPO had rejected this view, arguing that parts were economically distinct and often produced by separate entities.

The General Court disagreed, citing the 2020 judgment of the Court of Justice of the European Union in Ferrari (Cases C-720/18 and C-721/18), which held that use of a mark on integral replacement parts could constitute genuine use for the whole product category.

The court noted:

“The Board of Appeal must therefore assess in a concrete manner – primarily in relation to the goods or services for which the proprietor of a mark has furnished proof of use of its mark – whether those goods or services constitute an independent sub-category in relation to the goods and services falling within the class of goods or services concerned…
…
[T]he Board of Appeal failed to take account of settled case law according to which, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, that criterion is of fundamental importance in the definition of a sub-category of goods or services. “

Comment

Playing with the non-use requirements and ‘legal encroachment’ is becoming increasingly difficult when legacy brands are concerned. Greater investments over the decades offer a better outcome for brand value, which may allow to overcome even the harshest challenges – namely, non-use cancellation actions.
For luxury and legacy brands, the ruling offers assurance that strategic, aftermarket use can suffice to maintain trademark protection. It also places a greater evidentiary burden on challengers and greater pressure on IP offices to assess the full commercial context before revoking long-standing marks.