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Ferrari Drives Forward the Law on Genuine use of a Trade Mark

Is the use of a trade mark on second hand goods sufficient to maintain the registration of that trade mark for ‘new’ goods?

That was one of questions answered in a case recently heard by the Court of Justice of the European Union (“CJEU”). 

The result is ‘good news’ for trade mark owners.

Background

Ferrari owns an International trade mark registration for the stylised mark TESTAROSSA, designating (inter alia) Germany. The registration covers “vehicles; apparatus for locomotion by land, air or water, in particular motor cars and parts thereof.”

It also owns a registered German trade mark for the same mark and for the same/similar goods.

A third party applied to cancel the registrations, on the ground that, for a continuous period of 5 years, the marks had not been put to genuine use. 

Cars had been sold under the mark between 1984 and 1996 and a one-off in 2014, but during the period relevant to the assessment of whether genuine use had been made of the mark no new cars had been sold by Ferrari. It had only used the mark to promote and sell replacement and accessory parts for the previously sold “TESTAROSSA” branded cars and in connection with the resale of used/second-hand “TESTAROSSA” cars. It is suggested in the judgment that Ferrari might also have used the mark in connection with maintenance services for previously sold “TESTAROSSA” cars. 

The German appeal court hearing the case decided to refer it to the CJEU, in order to obtain legal clarity as whether such use was “genuine use”.

What did the CJEU decice?

  1. That the sale of replacement parts for (that are an integral part of) previously sold goods (e.g. parts for previously sold “TESTAROSSA” branded cars) can qualify as “genuine use” of a trade mark registered in respect of those previously sold goods (and not just “genuine use” of the trade mark in respect of the ‘parts’ sold for those goods). This is the case even if the original goods have not been sold under the trade mark for many, many years (e.g. in this case new “TESTAROSSA” motor cars had not been sold under the mark for many years).
  2. That when a trade mark owner resells its own used/second-hand trade-marked goods (e.g. second hand genuine “TESTAROSSA” branded cars) this can qualify as “genuine use” of the trade mark in respect of those goods (i.e. motor cars, generally, and not limited to second-hand cars).
  3. That when a trade mark owner provides, for example, maintenance and repair services in respect of previously sold goods (e.g. for “TESTAROSSA” cars) this can qualify as “genuine use” of the trade mark in respect of those goods (i.e. motor cars).   

What does this mean in practice?

Trade mark owners can maintain trade mark registrations for goods long after they have ceased selling ‘new’ goods under the trade mark, provided they continue to market and sell (with a view to creating/maintaining a market in) replacement parts and accessories for those goods and/or used/second-hand goods and/or they provide maintenance services for those goods. For example, if a company no longer makes and sells a particular brand of printer, but sells cartridges for it, or provides repair and maintenance services for the older models it previously sold, this can suffice to maintain a trade mark registration for “printers” – even if such printers have not been sold ’new’ for many years. 

For more information please contact Carl Steele on: c.steele@ashfords.co.uk   

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