José Carlos Erdozain. Of Counsel at PONS IP.
The General Court of the European Union (GCEU) has recently issued two rulings in relation to the well-known TESTAROSSA mark. These are the judgments dated 02/07/2025, handed down in cases T-1103/23 and T-1104/23, respectively. The parties involved in both cases were the same, namely the proprietor of the contested mark, Ferrari SpA, the EUIPO, obviously, and the intervener Mr Kurt Hesse.
What was the subject matter of the dispute in each case?
In case T-1103/23, the issue was whether EUIPO’s decision revoking the TESTAROSSA mark in Class 12 due to lack of use was lawful. It should be noted that this class protects, among other goods, vehicles. In turn, in case T-1104/23, the subject matter of the dispute was similar, except that it concerned goods in Class 28, i.e., among others, scale toy land motor vehicles. Here, too, the EUIPO revoked the TESTAROSSA mark for all goods in that class.
As can be seen at first glance, the mere fact that the EUIPO revoked the legendary TESTAROSSA mark due to lack of use, in Class 12 for vehicles no less, is striking, which is why these decisions are of particular interest.
In essence, the European High Court ruled in favour of Ferrari and annulled the EUIPO’s decisions, although in case T-1104/23, only with regard to “scale toy land motor vehicles”.
The importance of these decisions lies in the fact that the Court confirms its case-law on when a trade mark can be considered to have been subject to genuine use. Let’s take this step by step.
In case T-1103/23, the Court begins by recalling that “there is genuine use of a mark where 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, in order to create or preserve an outlet for those goods and services”, adding that “genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark”. The consideration of when there is effective use of a mark cannot be made in a sweeping manner, but rather, the Court insists, all relevant facts and circumstances must be taken into account.
What should be understood as relevant in this context? Particularly, these include practices in a given economic sector or the nature of the goods or services in question, the characteristics of the market or the importance and frequency of use of the mark, among other criteria.
The issue in dispute here was whether a second-hand sale of a vehicle bearing the disputed mark through an authorised dealer could be understood as a sale made with the consent of the trade mark proprietor. The issuance of certificates of authenticity for such vehicles was also defended as use of the mark.
In this regard, the Court held that if the proprietor of the trade mark genuinely uses that sign in accordance with its essential function, which is to guarantee the identity of the source of the goods for which it is registered, when reselling second-hand goods, such use may constitute “genuine use” for legal purposes. This requirement is thus integrated with that of consent to resale given by the proprietor of the trade mark. Furthermore, that consent may be either express or implied: it is therefore not excluded that the proprietor of the trade mark did not object to the use of the trade mark by third parties through resale, if this results from conclusive acts which unequivocally demonstrate that the proprietor has renounced his right and has also effectively participated with the third party in that use. That is precisely what happens in the present case, where the Court finds that the second-hand sale by a dealer authorised by the trade mark proprietor himself serves to indicate its commercial origin, particularly in the case of vintage collectible high-end models.
The Court also emphasises that the authenticity certification service can be regarded as genuine use of the mark for the purposes of revocation.
In Case T-1104/23, as mentioned above, the main issue was whether or not there was genuine use of the contested mark applied to “reduced-scale vehicles”. In other words, can the proprietor of a trade mark prohibit its use on this type of car?
The Court clarified this point by stating that the exclusive right of the proprietor of a trade mark must be reserved for cases where the use of the sign by a third party affects or is liable to affect the functions of the trade mark, in particular its essential function of ensuring that consumers are informed of the origin of the goods. Consequently, the affixing, by a third party, of a sign identical to a trade mark registered for toys to scale model vehicles cannot be prohibited unless it affects or is liable to affect the functions of that trade mark. This is not normally the case in the sector of reduced-scale vehicles that are exact reproductions of the original, since, according to the Court, consumers who collect this type of product are aware that the trade mark in question is reproduced solely for the purpose of being a faithful reproduction of the original, without it necessarily following that the reduced-scale model has been manufactured by the manufacturer of the original vehicle.
In our opinion, both rulings are very consistent with trade mark law and with the correct interpretation of the requirement of genuine use, which is required in revocation proceedings. Such a simple and strict interpretation of this requirement that limits its interpretation to only direct uses of the sign by its proprietor cannot be made. Moreover, the Court’s permissiveness regarding the use of distinctive signs on goods such as reduced-scale vehicles, where the objective pursued by the manufacturer is not exactly to establish a link with the proprietor of the mark or to take advantage of its reputation in any way, also seems correct.
