The Testarossa Trademark Tested

Do you still recognise this car? The trademark on the racing monster of Crockett and Tubbs from the 80s and 90s was recently the subject of a case before the Court of Justice in Luxembourg. Ferrari would not have used the "Testarossa" trademark genuinely in recent years and therefore its removal from the registers was claimed. After all, in order to maintain the monopoly on a trade mark, it must be used genuinely. Ferrari disagreed and following the Court's ruling, it does not appear that we can expect a Volkswagen, Kia or Peugeot Testarossa in the near future.

In order to maintain the monopoly to a trademark, the owner must use a trade mark "genuinely". This means that the trademark owner uses the trademark (in the course of trade) for its products or services. If the owner fails to do so for five consecutive years, an interested party may apply for the trade mark to be removed from the register. This is because, for example, he wants to use the trademark or a similar sign himself and does not want to receive any claims from a trademark owner. However, the owner is given the opportunity to prove that the trademark has been used genuinely.

The Ferrari Testarossa has not been produced since 1996 and, for that reason, the cancellation of the Testarossa trademark from the register was sought in Germany. Ferrari supplied proof of use, but that only applied to Ferrari Testarossa parts and the sales of second-hand Testarossas by Ferrari. It was not clear to the German court whether Ferrari had therewith sufficiently used its trademark for the goods 'cars' and the Court of Justice received preliminary questions.

The Court draws (inter alia) two main conclusions. First, the use of a trademark for parts of the goods for which it is registered constitutes genuine use. Secondly, the trademark is also put to genuine use if the proprietor of the trademark sells second-hand goods himself. However, both uses are subject to actual use of the trademark.

This opens doors for proving genuine use of trademarks through resold (repaired) goods by the trademark owner. At a time when, in the context of sustainability, "refurbished" and "second-chance" products are becoming increasingly popular, the trademark owner is given the opportunity to benefit from its exclusive trademark rights for just a little while longer without the trademarked goods actually rolling off the shelf.

Mathijs Peijnenburg