In its judgment on 2 July 2025 the General Court of the European Union ruled in favor of the luxury brand Ferrari in the dispute over the trademark rights to Ferrari's EU trademark Testarossa (T-1103/23).
In the previous case, toy manufacturer Kurt Hesse attempted to secure the trademark rights to the EU trademark Testarossa for certain products. The European Union Intellectual Property Office (EUIPO) ruled that Ferrari had not „genuinely used" the trademark and had thus lost the trademark rights. Ferrari has now successfully challenged this before the General Court.
Course of court proceedings
Ferrari has owned the EU word mark Testarossa (then Testa Rossa) since 2007. Ferrari had registered the mark for goods such as automobiles, spare parts and accessories and model cars, among others.
Toy manufacturer Kurt Hesse attempted to have the mark cancelled at the EUIPO in 2017 by filing two applications, arguing that Ferrari had not made „genuine use" under trademark law (Article 18 of the EU Trademark Regulation (EUTMR), §26 (1) of the Trademark and Other Signs Act, MarkenG.)
The EUIPO granted the applications and cancelled the EU trademark from the register with regard to all registered goods. It assumed that the EU trademark had not been „genuinely used" by Ferrari for the registered goods from 2010 to 2015.
In the dispute concerning trademark law, Ferrari successfully challenged the decision of the EUIPO by way of an action for annulment before the General Court (cf. Article 263 of the Treaty on the Functioning of the European Union; TFEU in conjunction with Article 72 EUTMR).
Why is Ferrari's Testarossa a luxury sports car?
The first sports car in the Testarossa series from the Italian luxury brand, the manufacturer of sports cars and Formula 1 vehicles, Ferrari, was the Ferrari 500 TR. It was built for the 1956 World Sports Car Championship and, unlike the three main Testarossa variants, was a pure racing car.
The name Testarossa derives from the distinctive red-painted cylinder heads in the engine. Literally, Testa Rossa means "red head" in Italian, a reference to this paint scheme on the luxury brand's legendary sports cars.
The wedge-shaped Testarossa model from the luxury brand Ferrari reached its peak in the 1980s. „With its low nose, extravagant 'struts' on the sides, and wide hips, Ferrari's design partner Pininfarina not only captured the spirit of the times—it pushed it forward. The new car—featuring a shortened version of a famous old name—was unveiled to the public for the first time in the run-up to the 1984 Paris Motor Show at the Lido cabaret theater on the Avenue des Champs-Élysées. This car was made for show business," says motoring journalist Jason Barlow.
With its „almost cartoonish shapes," the car conquered 1980s pop culture and achieved widespread notoriety. It was featured in the US series „Miami Vice" painted white and served as a prominent police car.
Hollywood stars such as French actor Alain Delon and world-famous British musician Elton John also owned the car from the luxury brand Ferrari. Elton John considers the Testarossa models to be „true vintage cars” and „loves their design, shape and style”.
How does Trademark Law protect luxury brands?
Trademark law enables brands and luxury brands like Ferrari to establish and maintain the recognition value and unique, distinctive quality standards of their products on the market.
Trademark law functions as an industrial property right and protects designations for goods or services in commercial transactions (see §3 (1) MarkenG).
By granting only the registered trademark owner the right to use a specific or similar sign in accordance with §14 et seq. and §4 MarkenG, trademark law protects this sign.
Trademark law protects consumers of luxury brands from confusion with similar products. Trademark law thus ensures that buyers of luxury brands can recognize the products based on their quality standards and the company behind them (the so-called origin function).
European Union Trademarks
Trademark law is largely harmonized in the European Union (EU), particularly through the EUTMR. National regulations remain in place in the MarkenG.
EU trademark law is created through a single registration procedure that grants owners exclusive rights to their trademark in the 27 Member States (the EU trademark). Once registered in the Register of EU trademarks, an EU trademark is valid for ten years and can be renewed for an unlimited number of additional ten years thereafter (see Articles 52 et seq. EUTMR).
The competent authority for EU trademark law is the EUIPO. It is directly responsible for the registration and administration of all EU trademarks. Decisions of the EUIPO can be appealed to the General Court after an unsuccessful appeal.
Obligation of Use in Trademark Law
For the protection of a registered EU trademark, EU trademark law provides for an obligation of use (Article 18, Article 58 (1) (a) EUTMR, see also §26 (1) MarkenG). According to this, the owner of the EU trademark must provide proof that he or she is „genuinely using" the trademark for the registered goods or services.
The obligation of use ensures that trademark protection is maintained. It is important that the regulation safeguards the origin function in trademark law. Only when the trademark is used in commerce can the origin function take effect.
Only a trademark that is used consistently and „genuinely" can achieve and maintain a strong position in the market and in commercial transactions. As soon as a luxury brand, for example, falls into disuse, it loses its recognition value and thus its long-term economic value.
Furthermore, the aim is to prevent new market entrants from being denied market access by securing the trademark „in advance" and not using it.
Specifically, the obligation of use under trademark law requires that the trademark be put to genuine use within the EU for the goods or services for which it is registered within an uninterrupted period of five years. If this is not the case, the trademark may be revoked upon application to and by the EUIPO, provided there are no "proper reasons for non-use" (Article 58 (1) (a) EUTMR).
„Genuine use" exists if the trademark is used for precisely the registered goods or services with the aim of creating or securing a public market for those products (I ZR 156/10 - Orion). Its function must indicate the origin of the goods or services and may not be used purely for show.
The obligation of use applies after a grace period of five years following registration of the EU trademark (Article 18 EUTMR). This period allows, for example, luxury brands to develop a brand strategy and prepare the launch of the brand on the market while the brand is already protected under trademark law.
What exactly was the legal dispute about?
The central issue of the trademark law ruling was the question of whether Ferrari had „genuinely used" the Testarossa EU trademark for five years between 2010 and 2015 (Article 18 EUTMR).
The relevant issue was that the luxury brand Ferrari had only built the Testarossa models for twelve years, between 1984 and 1996, and then discontinued production. From that point on, the used cars, as well as spare parts and accessories, were sold by third parties, authorized dealers or authorized dealers.
The luxury brand demonstrated that it had authorized dealers to sell second-hand models, spare parts, and accessories from the Testarossa range in several EU member states. It also demonstrated that it certified the authenticity of the Testarossa models for a fee.
How did the court decide?
The General Court therefore had to specifically address the question of whether the resale of used cars and their spare parts and accessories could also constitute „genuine use" under trademark law (Article 18 EUTMR).
It answered this question in the affirmative and found that trademark use preserving rights could exist in such a case. However, the prerequisite was that the resale took place with the (tacit) consent of the trademark owner.
The court justified its opinion by stating that the origin function under trademark law could be preserved in the resale of used goods. This follows, among other things, from the interpretation of Article 13 (1) of Regulation No. 209/2007 on the Community Trademark, according to which the owner „may not prohibit third parties from using a trademark" that has already been put on the market (See also the Hermés-Judgment; the Cartier LOVE-Judgement).
The fact that the luxury brand no longer produces the Testarossa series cars and only sells them through authorized dealers or distributors does not therefore preclude „genuine use."
In assessing whether tacit consent by the luxury brand Ferrari existed, the General Court based its decision on the „customs and characteristics specific to the automobile market."
It first found that the sale of used cars by „independent third parties is fundamentally different from sales by an authorized dealer or distributor." The fact that the used Testarossa models were sold by authorized dealers or distributors and not by an independent third party is an indication of the necessary consent by Ferrari.
Furthermore, the establishment of certification services constitutes tacit consent by the luxury brand to the resale of used Testarossa models, as well as spare parts and accessories. By certifying authenticity to authorized dealers or contract dealers, the luxury brand establishes a connection „between these two partners."
By certifying authenticity, the origin function under trademark law is also preserved. This is because the Testarossa brand is closely linked to the vehicle itself and has a special value on the market, particularly with regard to the exclusive character of the luxury brand.
Last but not least, by certifying authenticity, Ferrari was directly involved in the resale, giving customers the opportunity to purchase a Ferrari Testarossa on the used car market.
The court ruled similarly with regard to spare parts and accessories. The offered service of a certificate of authenticity „includes a verification of the commercial origin of the parts from which the Testarossa models are composed." Thus, the origin function, in particular, was sufficiently taken into account.
The court thus ruled that there was tacit consent to the resale, which constituted a legally preserving use of the trademark for the automobiles, spare parts, and accessories. The judgment is not yet final as of july 2025.
Resumé
The General Court clarifies the requirements for „genuine use" in trademark law in the context of the used luxury car trade. It clarifies that resale by authorized dealers can constitute trademark use that maintains the rights of the trademark.
„The aura and value of an iconic brand can last forever," says Leon van Lee, a dtb-lawyer and expert in luxury brands and trademark law. „To ensure that trademarks can be used as assets even after production of their products has ceased, the rights-preserving use should be examined."
Status 16.07.2025