Ferrari won an important lawsuit in the EU for its TESTAROSSA trademark and for the entire industry of old luxury cars

The European Court has ruled in joined cases C‑720/18 и C‑721/18 Ferrari SpA v DU.

These cases are important especially for manufacturers of luxury vehicles because they shed a light on the issue of old famous trademarks that are not completely used from the companies anymore.

The cases background is as follow:

Ferrari is the proprietor of the trade mark TESTAROSSA.

That mark was registered with the World Intellectual Property Organisation on 22 July 1987 as international trade mark 515 107 in respect of the following goods in Class 12 : ‘Vehicles; apparatus for locomotion by land, air or water, in particular motor cars and parts thereof.’

The same mark was also registered with the German Patent and Trade Mark Office on 7 May 1990 as mark No 11158448 for the following goods in Class 12: ‘Land vehicles, aircraft and water vehicles and parts thereof; motors and engines for land vehicles; car components, i.e. tow bars, luggage racks, ski racks, mudguards, snow chains, air deflectors, head restraints, seat belts, child safety seats.’

Since the Regional Court, Düsseldorf, Germany ordered the cancellation, on grounds of revocation, of the two Ferrari marks referred to in paragraphs 14 and 15 of this judgment (together ‘the marks at issue’) 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 decisions of that court before the Higher Regional Court, Düsseldorf, Germany.

The referring court states that Ferrari sold a sports car model under the designation ‘Testarossa’ between 1984 and 1991 and sold the follow-up models 512 TR and F512 M until 1996. According to the referring court, in 2014, Ferrari produced a one-off piece with the model designation ‘Ferrari F12 TRS’. It is apparent from the order for reference that, during the period relevant to the assessment of the use of the marks at issue, Ferrari used those trade marks to identify replacement and accessory parts of very high-priced luxury sports cars previously sold under those trade marks.

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, the referring court does not share the view expressed by the court of first instance that the extent of use demonstrated by Ferrari is not sufficient to establish genuine use of those marks.

However, according to the referring court, it is doubtful whether account may be taken of such particular features in the case of the marks at issue, since those marks were registered not in respect of high-priced luxury sports cars, but generally in respect of motor cars and parts thereof. The referring court takes the view that, if account is taken of whether the marks at issue have been put to genuine use in the mass market for motor cars and parts thereof, it would be necessary to find at the outset that no such use has been made of them.

The referring court adds that Ferrari claims to have resold, after inspection, used vehicles bearing the marks at issue. The court of first instance did not regard that as renewed use of the marks at issue since, following the first release onto the market of the goods bearing those marks, the rights which Ferrari derived from them had been exhausted and it was not in a position to prohibit the resale of those goods.

Since the concept of ‘right-maintaining use of a mark’ cannot go further than that of right-infringing use of a mark, acts of use which the proprietor of that mark cannot prohibit third parties from performing, cannot, according to the court of first instance, constitute right-maintaining use of that mark. For its part, Ferrari claimed that the sale of used vehicles bearing the marks at issue thereby comprised a renewed commitment in respect of the vehicle concerned and therefore constituted a renewed right-maintaining use of the marks at issue.

The referring court adds that, in the main proceedings, Ferrari claimed that it provided replacement and accessory parts in respect of the vehicles bearing the marks at issue and offered maintenance services for those vehicles. In that regard, the referring court states that the court of first instance found that, between 2011 and 2016, turnover of approximately EUR 17 000 was achieved with the replacement parts actually sold by Ferrari in respect of the vehicles bearing the marks at issue, which was not sufficient to constitute right-maintaining use of the marks at issue. It is true that there are only 7 000 vehicles worldwide bearing the marks at issue. However, that fact alone does not explain the small quantities of replacement parts sold under the marks at issue.

While being aware of the case-law arising from the judgment of 11 March 2003, Ansul (C–40/01, EU:C:2003:145), the referring court observes, first, that it follows from the ‘Guidelines for examination of European Union trade marks’ (Part C, Section 6, No 2.8) of the European Union Intellectual Property Office (EUIPO) that the application of that case-law should remain exceptional. 

Second, the referring court takes the view that there is a particular feature in the main proceedings, since the marks at issue also claim protection in respect of parts of motor cars, so that the application of the case-law arising from the judgment of 11 March 2003, Ansul (C–40/01, EU:C:2003:145) would mean that the marks at issue which have been used in respect of parts of motor cars are also used in respect of the motor cars, even if those motor cars have not been sold under those marks for more than 25 years. Furthermore, the question arises of whether genuine use of a mark can result from the fact that its proprietor still holds replacement parts and offers services in respect of the goods previously sold under that mark, but does not use that trade mark to designate those parts or services.

In relation to the territorial extent of the use required by Article 12(1) of Directive 2008/95, the referring court notes that that provision requires use ‘in the Member State concerned’. Relying on the judgment of 12 December 2013, Rivella International v OHIM (C–445/12 P, EU:C:2013:826, paragraphs 49 and 50), it notes that the Court has held that the use of a trade mark in Switzerland does not prove genuine use of the trade mark in Germany. However, the case-law of the Federal Court of Justice, Germany assumes that the Convention of 1892 is still in force and is to be applied by the German courts, having regard to Article 351 TFEU. Such an application could, nevertheless, give rise to difficulties, in the case of a German trade mark which, although it cannot be cancelled under German law, cannot be relied on in opposition proceedings to preclude the registration of a trade mark of the European Union either.

Lastly, the referring court observes that, in the main proceedings, the question also arises as to which party must bear the burden of proving genuine use of a trade mark. In accordance with German case-law, the general principles of civil procedure are to be applied, which means that, also in the case of an application for revocation for non-use of a registered mark, it is the party bringing the action which bears the burden of proving the facts on which that application is based, even if these facts are negative facts, such as the lack of use of a mark.

In order to take into account the fact that the precise circumstances of the use of a mark are often beyond the knowledge of the applicant for revocation, German case-law imposes on the proprietor of the trade mark concerned a secondary burden to explain in a substantiated and comprehensive manner how it has used it. Once the proprietor of the trade mark has discharged that burden of explanation, it is for the applicant for the cancellation of that mark to disprove those explanations.

The application of those principles to the main proceedings would mean that a ruling could be given on those proceedings without an evidentiary hearing, since Ferrari has sufficiently explained in a substantiated manner the acts of use which it performed and has also offered proof, although DU confines himself to contesting Ferrari’s submission without offering any proof of his own. He would therefore have to be regarded as not having discharged the burden of proof. If, on the other hand, that burden of proof was to lie with Ferrari, as the proprietor of the marks at issue, the proof offered by it would have to be examined.

In those circumstances, the Higher Regional Court, Düsseldorf decided to stay the proceedings and to refer the following questions, which are identical in both cases, to the Court of Justice for a preliminary ruling:

‘(1) When assessing the question of whether use is genuine in terms of nature and extent within the meaning of Article 12(1) of [Directive 2008/95] in the case of a trade mark which is registered in respect of a broad category of goods, in this case land vehicles, in particular motor cars and parts thereof, but is actually only used in respect of a particular market segment, in this case high-priced luxury sports cars and parts thereof, is account to be taken of the market for the registered category of goods overall or may account be taken of the particular segment? If the use in respect of the particular market segment is sufficient, is the trade mark to be maintained in relation to that market segment in cancellation proceedings due to revocation?

(2) Does the sale of used goods which have already been released onto the market by the trade mark proprietor in the European Economic Area constitute use of the trade mark by the trade mark proprietor within the meaning of Article 12(1) of [Directive 2008/95]?

(3) Is a trade mark which is registered not only in respect of a product, but also in respect of parts of that product also used in a right-maintaining manner in respect of the product if that product is no longer sold, but there are still sales of trademarked accessory and replacement parts for the trademarked product sold in the past?

(4) When assessing whether there is genuine use, is consideration also to be given to whether the trade mark proprietor offers services which do not use the trade mark but are intended for the goods already sold?

(5) When examining the use of the trade mark in the Member State concerned (in this case Germany) within the meaning of Article 12(1) of [Directive 2008/95], pursuant to Article 5 of the [Convention of 1892], are uses of the trade mark in Switzerland also to be taken into consideration?

(6)  Is it compatible with [Directive 2008/95] to require the trade mark proprietor against which action is being taken due to revocation of the trade mark to comprehensively explain the use of the trade mark, but to impose the risk of evidence not being furnished on the cancellation applicant?’

The Court’s decision:

1.  Article 12(1) and Article 13 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to ‘genuine use’ within the meaning of Article 12(1), in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered.

2.   Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark.

3.  Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark 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.

4.  The first paragraph of Article 351 TFEU must be interpreted as allowing a court of a Member State to apply a convention concluded between a Member State of the European Union and a non-member State before 1 January 1958 or, for States acceding to the European Union, before the date of their accession, such as the Convention between Switzerland and Germany concerning the Reciprocal Protection of Patents, Designs and Trademarks, signed in Berlin on 13 April 1892, as amended, which provides that the use of a trade mark registered in that Member State in the territory of the non-member State must be taken into consideration in order to determine whether that mark has been put to ‘genuine use’ within the meaning of Article 12(1) of Directive 2008/95, until such time as one of the steps referred to in the second paragraph of Article 351 TFEU makes it possible to eliminate any incompatibilities between the TFEU and that convention.

5. Article 12(1) of Directive 2008/95 must be interpreted as meaning that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of that provision, rests on the proprietor of that mark.

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