Italian luxury sports car manufacturer, Ferrari S.p.A., has won an EU trade mark dispute concerning use of its ‘Testarossa’ trade mark. The EU General Court said that Ferrari had been wrongfully striped of its rights to the mark, and instead confirmed that it has maintained genuine use.
For background, Ferrari’s Testarossa is an iconic sports car, produced between 1984 and 1996, and became a symbol of 1980s automotive flair, especially after starring on America’s crime TV series, Miami Vice. Though production ceased almost three decades ago, Ferrari enforced the Testarossatrade mark under its EU registration from 2007, and maintained it within the brand. In 2023, the EU Intellectual Property Office (EUIPO) revoked Ferrari’s rights to the mark, citing non-use between 2010–2015, a requirement under EU trade mark law. German toy maker, Autec, had kickstarted the challenge as it filed the non-use action.
The EU General Court has overturned the EUIPO’s decision to revoke the mark, and affirmed that Ferrari had maintained “genuine use” of the trade mark. The decision gave mention to the fact that Ferrari-approved dealers sold and certified pre-owned Testarossa cars with the mark, proved ongoing use and regarded that use of the trade mark when reselling second-hand goods is capable of constituting genuine use. The court held that Ferrari demonstrated further genuine use by using the mark on replacement parts and the use of the mark on licensed scale models, reinforcing brand identity.
Ferrari’s victory is a landmark decision in EU trade mark law, as the General Court’s interpretation of “genuine use” as being inclusive of secondary‑sales, parts, and licensed products not only reinstates the the Testarossa trade mark but also reshapes trade mark enforcement across Europe.
If you have any questions on the above, feel free to contact a member of the team at 0191 281 4000 or alternatively at legal@mcdanielslaw.com.
