Ferrari wins back trade mark rights to TESTAROSSA in the EU

In a General Court judgment yesterday (2 July 2025), the previous decisions of the EUIPO and Board of Appeal to cancel Ferrari's EU trade mark registrations for the TESTAROSSA name were overturned.

Background

The Testarossa was manufactured by Ferrari between 1984 and 1996 with around 10,000 cars produced in this time.  

In 2014 and 2015, a German individual initiated proceedings at the EUIPO to cancel Ferrari's trade mark registrations for the TESTAROSSA name on the grounds that the name had not been put into genuine use in the EU for a consecutive period of five years.

The EUIPO and the Board of Appeal both agreed that the mark had not been genuinely used by Ferrari, and noted that Ferrari had not manufactured or distributed any new cars under the Testarossa name during the relevant 5 year period in the 2010s. 

It was also held that any second-hand sales of Testarossa cars during this time could not be considered genuine use by Ferrari themselves, given that Ferrari's consent is not required for these sales to take place. 

Finally, the certification service provided by Ferrari in respect of authenticating second-hand Testarossa vehicles and their parts was held to have been provided under the FERRARI mark rather than the TESTAROSSA mark. 

General Court decision

Ferrari appealed the decisions to the General Court. 

Contrary to the Board of Appeal's decision, the General Court held that sales of second-hand cars by a dealer or distributor authorised by Ferrari constitute “an indication that the sale is conducted with the consent, albeit implied, of [Ferrari]” (paragraph 45). 

It was also noted that Ferrari is directly involved in the sale of certain second-hand Testarossas by authorised dealers and distributors by way of its certification service, which confirms the authenticity of the vehicles. 

Arguments were also made by Ferrari in respect of the sale of parts and accessories for Testarossas. In particular, their website confirms that Ferrari “holds the exclusive global distribution rights for all factory-made parts for any pre-1995 Ferrari cars” (paragraph 89) and the use demonstrated in the case in respect of the sale of spare parts and accessories was “by authorized dealers and distributors within which [Ferrari] had economic and contractual links”.

Furthermore, the certification service offered by Ferrari also includes the verification of the origin of the main parts of a second-hand Testarossa vehicle. Therefore, for the same reasons as above, the Court held that Ferrari had demonstrated that it impliedly consented to the use of the TESTAROSSA mark by third parties in relation to spare parts and accessories. 

The General Court has therefore overturned the previous decisions in their entirety and reinstated Ferrari's registrations for TESTAROSSA. The EUIPO could still appeal this decision up to the Court of Justice with the General Court's permission but for the time being, Ferrari have successfully demonstrated genuine use of the TESTAROSSA mark through sales and certification of second hand models and their parts.

This will surely be a welcome victory for the automotive industry and seemingly strengthens the ongoing protection of vintage model names in the EU through second-hand sales with either the direct or implied consent of the original manufacturer. The second-hand market forms a significant part of the automotive industry, particularly for vintage models and their parts. Provided that the original manufacturers remain involved in the second-hand market through activities similar to Ferrari's, they can be more reassured than previously that their EU trade mark rights for vintage model names are being maintained. 

However, it is nonetheless conceivable that, depending on the circumstances, as in the present case, the reputation of the contested mark may constitute one factor among others that casts light on the practices regarded as warranted in the economic sector concerned as a means of maintaining or creating market shares for the goods protected by the mark, within the meaning of the case-law cited in paragraph 22 above. In particular, as has been pointed out in paragraph 44 above, the fact that an especially sought-after car is sold by a dealer or distributor authorised by the proprietor of the trade mark can serve to reassure customers that the maintenance of the car and any replacement of parts and accessories have not been carried out in such a way as to affect its commercial origin (General Court decision, paragraph 59)

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