The question whether the second-hand sales can be considered as a genuine use of the trademark was especially raised in the dispute over the trademark rights to Ferrari’s EU trademark Testarossa (T-1103/23).
Ferrari has owned the EU word mark Testarossa since 2007. Ferrarihad registered the mark for goods such as automobiles, spare parts and accessories and model cars, among others.
In September 2015, a request for revocation of the registration was filed, on the grounds of non-use, i.e that the trademark had not been put to genuine use for a continuous period of 5 years in relation to the goods it covered.
The central issue was the question of whether Ferrari had „genuinely used” the Testarossa EU trademark for five years between 2010 and 2015.
According to the EU trademark regulation ‘A trademark shall be liable to revocation if, within a continuous period of five years, it has not been put to genuine use in the Member State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark.
In the first instance procedure, Ferrari filed evidence of use including articles, pictures, a list of cars certified by Ferrari as Testarossa, various invoices relating to the sale and certification of second-hand Testarossa cars and a list summarizing sale of second-hand ‘TESTAROSSA’ cars.
The main allegation was that the luxury brand Ferrari had only built the Testarossa models for twelve years, between 1984 and 1996, and then discontinued production.
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.
Both parties appealed the decision to the Board of Appeal. However, The Board of Appeal found that, based on the evidence filed, it could not conclude that there had been genuine use of the mark for spare parts of Testarossa cars as production has ceased, and the parts available on the market were mainly second-hand parts which came from other second-hand cars.
Contrary to the Board of Appeal, the General Court has Decided that sales of second-hand cars by a dealer or distributor with authorization by Ferrari constitute indication that the sale is conducted with the consent and can be considered as a genuine use.
In North Macedonia, according to the applicable law, the maintenance of the validity of a trademark is conditioned by its use in trade. The trademark holder is obliged, to maintain the validity of the trademark, to use it in trade for the goods and services for which it is registered, unless there are serious reasons for non-use, independent of the will of the holder.
In addition, the use of the trademark by another person with the approval of the right holder is also considered as use by the holder himself.