The matter at hand

Ferrari registered the figurative mark 'Testarossa' with WIPO in 1987 as an international trade mark. Subsequently, in 1990, the same mark was also registered with the German Patent and Trade Mark Office. These registrations encompassed the goods classified under class 12 of the Nice Agreement. The Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) ordered the cancellation, on grounds of revocation, of the two Ferrari marks on the ground of non-use. Ferrari appealed the decision before the Oberlandesgericht Düsseldorf (Higher Regional Court, Düsseldorf, Germany). 

The Oberlandesgericht notes that Ferrari used the marks for the ‘Testarossa’ sportscar model between 1984 and 1991, the follow-up models 512 TR and F512 M in 1996, and a one-off piece with the model designation F12 TRS in 2014. During the period relevant to the assessment of use of the marks at issue, Ferrari used the trade mark for replacement and accessory parts of high-priced luxury sports cars previously sold under those trade marks.

The Oberlandsgericht questioned whether this level of use is sufficient to meet the threshold of genuine use. This query arises specifically when the registered marks cover a broad category of goods but are, in practice, only utilized within a specific market segment, namely high-priced luxury sports cars and their components. In these circumstances, the referring court sought clarification on the question of genuine use within the meaning of Article 12(1) of Directive 2008/95 and has raised six preliminary questions to the ECJ. These questions cover the assessment of genuine use concerning market segments, resale of used goods, use of trade marks for parts, consideration of services for previously sold goods, the territorial scope of use, and the burden of proof in cancellation proceedings.

The judgment of the ECJ

With regard to the first and third question, the ECJ emphasizes that genuine use should be assessed considering all relevant facts, including the economic sector, market characteristics, and frequency of use. Use of a mark for replacement parts integral to the goods covered by the mark constitutes genuine use for both the replacement parts and the goods (paragraph 35).

The ECJ notes that the concept of a “particular market segment” is not relevant to assessing independent subcategories. “The only relevant question in that regard is whether a consumer who wishes to purchase a product or service falling within the category of goods or services covered by the trade mark in question will associate all the goods or services belonging to that category with that mark” (paragraph 43). In the case at hand the ECJ states that the use of the marks for replacement parts and accessories for high-priced luxury sports cars may not be sufficient to establish independent subcategories. However, the circumstance that the mark has been used for very high-priced goods is relevant to determining genuine use, as it shows non-token use in line with the mark's essential function.

The ECJ concludes that “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, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of the goods, unless it is apparent from the relevant facts and evidence that a consumer who wished to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered” (paragraph 53).

The second question from the referring court asks whether Article 12(1) of the Directive 2008/95 implies that a trade mark can be genuinely used when its proprietor sells second-hand goods previously placed on the market under that mark. The ECJ clarifies that while the mere resale of a second-hand product does not constitute "use" of the mark, if the proprietor utilizes the mark to guarantee the origin of the goods during the resale, it qualifies as "genuine use". The ECJ notes that Article 7(1) of the Directive 2008/95 on the exhaustion of the rights conferred by a trade mark confirms that interpretation. The ECJ emphasizes that “The fact that the proprietor of the trade mark cannot prohibit third parties from using his trade mark in respect of goods already put on the market under that mark does not mean that he cannot use it himself in respect of such goods” (paragraph 59). Therefore, the ECJ states that a trade mark can be genuinely employed when its proprietor resells second-hand goods originally introduced to the market under that mark.

The ECJ then goes into the question of whether Article 12(1) of the Directive 2008/95 should be construed to mean that a trade mark is genuinely used by its proprietor when providing services linked to previously sold goods, even if the mark itself is not used during the provision of those services. The ECJ considers that genuine use involves the actual use of the trade mark when services directly connected to previously sold goods are provided (Ansul C-40/01). In the absence of using the mark during the provision of these services, genuine use cannot be claimed.

With the fifth question, the referring court seeks to understand if Article 351 TFEUTreaty on the Functioning of the European Union allows a Member State's court to apply a pre-1958 convention, such as the 1892 Convention, which considers the use of a trade mark in a non-member state for determining genuine use under Article 12(1) of the Directive 2008/95. The ECJ explains that Article 12(1) focuses on genuine use in the Member State and excludes consideration of use in non-member states. However, the court can apply pre-1958 conventions under Article 351 TFEUTreaty on the Functioning of the European Union, with the obligation to eliminate incompatibilities with EU law (paragraph 72). Hence, the provision of the convention must be taken into consideration until such time. 

Lastly, the ECJ addresses the question regarding the burden of proof. The ECJ emphasizes that although member states have some freedom in setting procedural provisions for trade mark revocation, the mater of the burden of proof for genuine use is not solely within the realm of national law. The ECJ states, with reference to Oberbank and Others (C-217/13), that it is the proprietor “which is best placed to adduces evidence in support of the assertion that its mark has been put to genuine use” (paragraph 81). Therefore, the answer to the sixth question is that Article 12(1) of Directive 2008/95 should be understood as placing the burden of proof for 'genuine use' on the proprietor of the trade mark.