‘Genuine use’ for EU trade marks
The Court of Justice of the European Union (CJEU) has ruled that ‘genuine use’ for EU trade marks can be established through the provision of spare parts services or second-hand goods which are linked to the mark in question in Ferrari SpA v DU.
In this case, Ferrari’s longstanding battle against revocation of the “Testarossa” mark was finally won. The Testarossa name related to a now defunct line of cars which Ferrari has ceased manufacturing and opponents argued that there had been no genuine use of the mark since the cars had ceased being produced.
What does this mean?
The general rule across the EU (and UK) that you must use a mark still stands. More specifically, a trade mark must be put to "genuine use" in connection with the goods or services for which it is registered (within a continuous period of five years). Failure to use the trade mark leaves it vulnerable to "revocation" (i.e. game over).
In this case, Ferrari argued that as it still serviced the Testarossa cars with spare parts and services when needed, this counted as "genuine use". The CJEU agreed. The court also found that genuine use can be claimed provided that the average consumer would still perceive the product in question as falling under the same category of goods and services for which the trade mark is registered. Therefore, if seeking to rely on less conventional use it is important for brand owners to ensure that their trade mark is defined ‘particularly precisely and narrowly’.