Genuine Use of Trade Marks in Secondary Markets: The General Court Reassesses the TESTAROSSA Standard

The General Court has recently delivered a significant clarification on the concept of genuine use of trade marks in the European Union, addressing both second-hand goods and the role of authorised third-party intermediaries. By annulling the Board of Appeal’s decision, the Court confirmed that the EU word mark TESTAROSSA has been genuinely used in relation to automobiles, as well as parts and accessories in Class 12, while providing important guidance on the interplay between trade mark law and commercial practice in the luxury automotive sector.

Beyond Mere Resale: Genuine Use in Context

The decision underscores that the resale of second-hand goods, in isolation, does not constitute genuine use of a trade mark. However, the Court emphasised that where the proprietor actively participates in, or authorises, the resale in a manner that preserves the mark’s essential function, signalling origin and authenticity, such use may qualify as genuine.

Crucially, the Court situated this analysis within the broader framework of EU exhaustion rules. While trade mark rights may be exhausted following initial sale, this does not preclude continued use to maintain the identity of the goods and the assurances associated with the mark. The ruling thus reflects an appreciation of the enduring economic and reputational value of high-end, durable goods such as luxury automobiles.

Third-Party Use and Implied Consent

The Court clarified the conditions under which use by third parties can be attributed to the trade mark proprietor. It reaffirmed that use with the proprietor’s consent is deemed use by the proprietor itself. Yet, implied consent cannot be inferred from mere knowledge or passive acquiescence. Especially in the context of second-hand goods, the proprietor must play an active role in or authorise the relevant commercial activity.

In TESTAROSSA, the Court found that authorised dealers, bound by contractual and economic relationships with Ferrari, were sufficiently integrated into the proprietor’s distribution network to establish genuine use. This reasoning highlights the importance of formalised relationships and active oversight in demonstrating that third-party use contributes to the maintenance of trade mark rights.

Market Realities and Sector-Specific Practices

The judgment reflects a nuanced understanding of commercial realities in the automotive sector. Vehicles are commonly marketed under both the manufacturer’s brand and the individual model designation. Authorised dealers are generally expected to offer all models, including historic or collectible vehicles.

For luxury and vintage automobiles, authorised sales channels perform a crucial role in certifying provenance, authenticity, and maintenance history, which are decisive factors for buyers. By acknowledging these practices, the Court grounded its assessment of genuine use in the realities of the market, recognising that the function of a trade mark extends beyond the first sale to the reassurance of downstream consumers.

Certification Services and Ancillary Activities

Beyond direct sales, Ferrari’s certification services were held to constitute genuine use of the TESTAROSSA mark. These services, which authenticate and certify the provenance and condition of vehicles, were found to reinforce the essential function of the mark. The Court observed that invoices and documentation prominently displayed the TESTAROSSA designation, and that its joint use alongside the Ferrari brand conformed with customary market practices.

This acknowledgment of ancillary services as a legitimate form of trade mark use underscores that genuine use is not limited to the physical sale of goods. Where services are closely connected to the goods and enhance the mark’s economic and reputational function, they can support the continued validity of the registration.

Parts and Accessories: Scope of Protection

The Court also addressed the use of the mark in relation to parts and accessories. The sale of “genuine Testarossa parts” by authorised dealers was deemed genuine use, reflecting that replacement components integral to the vehicle fall within the scope of the registered mark. The Court clarified that a trade mark registered for a category of goods and their parts generally extends to both, unless the part forms a distinct subcategory based on purpose or intended use. Consumer perception and market expectations remain the decisive criteria in defining such subcategories.

The General Court’s ruling offers a sophisticated and commercially informed framework for assessing genuine use of trade marks in secondary markets. It confirms that genuine use must be considered holistically, taking account of authorised distribution networks, the proprietor’s involvement, ancillary services, and sector-specific market practices.

For proprietors of luxury, collectible, or durable goods, the decision highlights that maintaining trade mark rights requires more than formal compliance. It demands an integrated strategy in which authorised dealers, certification services, and other market activities collectively reinforce the mark’s essential function. By doing so, trade mark owners can preserve both the legal validity of their registrations and the enduring commercial value of their brands and model designations across primary and secondary markets.

02/07/2025, T‑1103/23, TESTAROSSA, EU:T:2025:659

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