Ferrari with its well known trademark "Testarossa" at risk in Germany.
Following the dispute between the famous car manufacturer Ferrari and the Autec AG, holded by the Kurt Hesse with respect to trademark "Testarossa" in Germany, arised the well known trademarks genuine use issue.
The dispute began with the trademark filling application "Testa rossa" from Autec AG in Germany for electric bicycles and other products. Ferrari objected to the registration of this trademark on the basis of its trademarks "Testarossa", an opposition which Autec AG contested filing a cancellation request based on non use of Ferrari trademark in the Düsseldorf Court.
The sports car that became famous mainly due to the TV show "Miami Vice" has stopped manufacturing in 1996, being replaced by other models with different names.
The German court considered that the Ferrari trademark "Testarossa" which had been registered in Germany in 1990 to designate " apparatus for locomotion by land, air or water and components therefor" was not used for a longer period for five consecutive years, thereby, the Court declared the Ferrari trademark cancellation in Germany, according the German Law.
The German court considered that the evidence submitted by Ferrari was insufficient to demonstrate the trademark genuine use in Germany:
- Maintenance and repair services to "Testarossa" vehicules do not lead to genuine use of the trademark, because those services are not offered under the "Testarossa" trademark. In fact, those services are offered under the name "Ferarri Classiche".
- The Court acknowledged that in principle the spare parts could qualify as genuine use, as long as the spare parts were distributed under the Testarossa name to a serious extent. In the present case, the Court was not convinced that this was the case since Ferrari only sold a small number of spare parts (mainly oil filters), this only designates a marginal portion of Ferrari's offering in the field of its used cars. Therefore, there is no serious use, but rather a symbolic use of the Ferrari "Testarossa" trademark.
- Furthermore the Court considered that the trade in second-hand "Testarossa" cars cannot be deemed as genuine use. The trademark rights for such sports cars which have been previously placed on the market by Ferrari are exhausted in accordance with the German Law. The subsequent sale of the used cars cannot be considered as a trademark relaunch in the market.
- With regard to the promotion of the "Testarossa" vehicle on the German website under the heading "all Ferrari models of the past", the Court argued again, that those actions cannot be qualified as genuine use, since the advertising does not relate to the branded product but serves to boost Ferrari's image.
Despite the Ferrari possibility of appealing this court ruling and its trademark "Testarossa" still benefit from protection as an European trademark, it is still a blow to one of the most famous trademarks in automotive history. This Court ruling should serves as a warning that trademark owners should not assume their legacy trademarks are safe, no matter how well known they are. The trademark owners of well known trademarks should be vigilant about keeping those trademarks in use if they want to protect them, maintain genuine use of the mark or risk losing your registered rights.
This decision should be a wakeup call for all trademark owners. As it is in the public interest to keep the trade mark registers free from unused trade marks a non-use cancellation action can be filed by anyone.
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