The CJEU ruled that a trade mark for a discontinued product used to provide services or sell replacement and accessory parts in respect of that product will amount to "genuine use" of the mark. Further, a proprietor using that mark to re-sell second-hand goods can also enjoy continued protection.
Ferrari registered the mark "Testarossa" with the WIPO in 1987 in Class 12 for vehicles and parts thereof (and similarly in Germany in 1990). Its iconic line of Testarossa racing sports cars then went into production, only to be discontinued several years later.
Ever since, Ferrari's mark has come under heavy fire for revocation in Germany. In 2017, a Court of First Instance ordered Ferrari to cancel its mark under Art 12(1) of the 2008 Trade Mark Directive.
Article 12(1) (since replaced by Article 19 of the 2015 Trade Marks Directive) provides that a trade mark will be liable to revocation if it has not been put to "genuine use" for a continuous five-year period and there are no proper reasons for non-use.
Ferrari objected and argued that during the relevant five-year period (2011-2016), it had used the mark to: (i) identify spare parts and accessories (worth €17,000) for cars marketed under the Testarossa name; (ii) offer maintenance services for the Testarossa models; and (iii) re-sell used models. However, the Court found that this did not amount to genuine use and dismissed Ferrari's argument.
On appeal, the court referred several questions to the CJEU for a preliminary ruling regarding the interpretation of genuine use under Article 12(1).
First, the CJEU considered whether the genuine use test could be met for goods where the mark had only been used for replacement parts or accessories. The answer was yes, as the parts were integral to the structure of the goods previously sold and the intention was to meet the needs of customers.
Second, the CJEU was asked whether, in situations where a trade mark is registered for a broad category of goods (here, vehicles), genuine use can be proved through the use of the mark for only some goods in that category (here, "sports cars"). Again, the CJEU agreed with Ferrari that it could, unless the consumer would perceive the goods to be in an independent subcategory. A Ferrari is certainly a high-performance sports car, but it is also a vehicle that transports people just like any other car; it is not an independent subcategory.
Third, the CJEU was asked whether genuine use of a trade mark can be evidenced by the sale of second-hand vehicles and used goods already on the market. Ferrari succeeded again. Whilst it could no longer prohibit third parties from using the mark to re-sell second-hand goods, by using the mark itself to guarantee the origin of the second-hand vehicles it was selling, Ferrari was making genuine use of the mark.
Finally, the CJEU considered whether providing services for goods could amount to genuine use to ensure continued protection of the trade mark for the goods themselves. Ferrari made it a full house: the CJEU agreed, on the (unsurprising) proviso that any such services are provided under that mark.
This ruling is a major victory for owners of household luxury brands whose iconic goods are still in circulation after production has ceased. It indicates that even if a trade mark for "high-end" products is registered for a wide group of goods, genuine use will be met for that wide group unless the consumer would consider it to be in its own subcategory.
Further, the sale of accessories, spare parts and services for those goods and re-sale of used goods by the brand owner will result in continued trade mark protection for the goods themselves.
Article 12(1) and Article 13 of Directive 2008/95 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.