EUIPO Fifth Board of Appeal rules out that sale of spare parts for Ferrari’s Testarossa is genuine use of the trade mark

Pursuant to Article 58(1)(a) of Regulation 2017/1001 (EUTMR), a trade mark which has not been put to genuine use by its holder within five years after its registration may be liable to revocation unless there are valid reasons for its non-use. When considering spare parts in connection with genuine use, the Court of Justice of the European Union (CJEU) held in Ferrari SpA v DU (C-720/18) EU:C:2020:854 (amongst others) that use of a trade mark is also genuine use if the proprietor of the trade mark sells second-hand goods themselves.

In the application of the above, the EUIPO Fifth Board of Appeal, in a recent decision (joined cases R 334/2017-5 and R 343/2017-5), considered that, while it is possible for the trade mark holder to put the trade mark to genuine use in the context of second hand sales, the simple reference to the contested trade mark on second hand vehicles would not amount to genuine use.

In 2015, the Cancellation Applicant filed a request for revocation of Ferrari’s International trade mark ‘Testarossa’, designating (amongst others) the European Union, initially registered by Ferrari in connection with the premier of its sports car series from the 80’s and 90’s. The Cancellation Applicant claimed that the earlier mark had not been put to genuine use for a continuous period of five years, pursuant to Article 58(1)(a) EUTMR.

In 2016, the Cancellation Division partially revoked the contested trade mark in relation to certain goods in Class 12 but maintained it for others (vehicles and automobiles). Both parties appealed the decision to the EUIPO Fifth Board of Appeal (the Board) which, last month, held (joined cases R 334/2017-5 and R 343/2017-5) that the mark had not been put to genuine use in connection with automobiles.

Testarossa depicted in Miami Vice

The Board considered that Ferrari had failed to show that it was actively involved in using the trade mark for second hand cars, and that it had ceased the production of those cars over twenty years ago. Ferrari also failed to show that third parties had to obtain express consent upon selling the vehicles on the second-hand/spare parts market.

According to the Board, the reference to the trade marks by traders only amounted to qualified descriptive use, in the context of exhaustion or fair use, pursuant to Articles 15 and 14 EUTMR. While the CJEU’s case law (Ferrari SpA v DU (C-720/18) EU:C:2020:854 and Ansul BV v Ajax Brandbeveiliging BV (C-40/01) EU:C: 2003:145) suggest that using the trade mark for spare parts might be considered genuine use for the complete product, the evidence submitted by Ferrari did not sufficiently demonstrate genuine use of the trade mark for relevant spare parts that could be seen as equivalent to an automobile.

Comment

The Board’s decision clarifies the scope of genuine use for second hand goods and genuine use for replacements parts of a product. Whereas it is possible for the trade mark holder to put the trade mark to genuine use in the context of second hand sales, the simple reference to the contested trade mark on second hand vehicles would not amount to genuine use pursuant to Article 58(1)(a) EUTMR.

Furthermore, express consent by the trade mark holder, or the intention of third parties to act on behalf of the holder was not demonstrated by Ferrari in the present case. The simple awareness of the sales between third parties was not sufficient to demonstrate genuine use. In all this, the Board did confirm that the sale of parts of vehicles can be the equivalent of vehicles if the use is genuine and not only ‘fit for the main product’ and the parties are of such nature that they can be considered to be produced by the same company and sufficiently important to be the equivalent of the vehicle.