Background

In 1987, Ferrari SpA was granted the following international trade mark registration in Class 12 covering, “Vehicles; apparatus for locomotion by land, air or water, in particular motor cars and parts thereof”:

In 1990, Ferrari was granted a German national registration for the same mark, again in Class 12.

The evidence was that Ferrari sold a sports car model under the TESTAROSSA trade mark until 1996 and, in 2014, it produced a one-off piece under the trade mark. Between 2011 and 2017, Ferrari sold €17,000 worth of replacement parts in relation to the 7,000 cars sold under the TESTAROSSA trade mark still in existence. The Düsseldorf Regional Court in Germany did not think that this constituted “genuine use” of the marks in Germany and Switzerland for a continuous period of five years as required under Article 12(1) of the Directive and revoked them both.

Ferrari appealed to the Higher Regional Court in Düsseldorf, which referred various questions to the CJEU. In particular, it asked whether Article 12(1) should be interpreted to mean that a trade mark registered in respect of a certain category of goods, such as motor cars and their replacement parts, is considered as having been put to “genuine use” under Article 12(1) for all of the goods within that category and their replacement parts, even where it has been used in respect of only some of those goods, such as “high-priced luxury sports cars”, or in respect of only replacement parts or accessories of that subcategory of goods.

Decision

The German court had said that the mark had only been used “in respect of a particular market segment”, i.e. “high-priced luxury sports cars”. The question here was, therefore, whether replacement parts relating to “high-priced luxury sports cars” was a subcategory of the goods for which the mark was registered, meaning that Ferrari could only claim rights in relation to that particular subcategory and not the category of cars as a whole.

The CJEU said that, when deciding whether there is a subcategory of goods, the relevant criterion to apply is that of the purpose and intended use of the goods or services in question. The court must therefore assess whether the goods or services in relation to which the proprietor has provided proof of use of its mark (in this case replacement parts for cars previously sold under the TESTAROSSA mark) constitute an independent subcategory in relation to the goods and services that fall within the class concerned, so as to link the goods or services for which genuine use of the mark has been proved to the category of goods or services covered by the registration.

It followed, therefore, the CJEU said, that the concept of a “particular market segment”, in this case “high-priced luxury sports cars”, was not relevant and not sufficient to render it a subcategory of goods. Although “sports cars” are high-performance cars and can be used in motor sports, this was only one of their possible uses and they could also be used like any other car. Further, the concept of “luxury” could be applied to various types of cars, not just sports cars.

The only real question was whether a consumer who wished to purchase a product or service falling within the category of goods or services covered by the mark would associate all the goods or services belonging to that category with that mark. An economic analysis showing that the various goods or services included within that category belonged to different markets, or to different market segments, was irrelevant.

Therefore, the fact that Ferrari had used the marks in respect of replacement parts and accessories for “high-priced luxury sports cars” was not sufficient to show that it had used the marks in respect of only some of the goods covered by them for the purposes of Article 13.

As for Article 12(1), the fact that the mark had been used in relation to “high-priced” goods showed that, despite the relatively low number of product units sold under the mark, the use which had been made had not been token, but constituted use of the marks in accordance with their essential trade mark function (i.e. denoting origin), which therefore constituted “genuine use” under Article 12(1). (Joined cases C-720/18 and C-721/18 Ferrari SpA v DU EU:C:2020:854 (22 October 2020) — to read the judgment in full, click here).