Ferrari S.p.A (Ferrari) may be facing loss of the registration of its legendary TESTAROSSA trade mark for its iconic sports car in Germany. The trade mark was used by Ferrari during the mid-1980s to mid-1990s for its sought after sports cars featured in the TV series Miami Vice and popularised by celebrity fans. Production of the cars stopped around the early 1990s.
An individual filed an application to register TESTA ROSSA for e-bicycles, amongst other goods, in Germany. Ferrari opposed the registration based on its trade mark TESTAROSSA but was unsuccessful because it could not show use of its trade mark for the five years leading to the opposition.
The individual then applied to cancel Ferrari’s registered German and European Union trade marks TESTAROSSA due to non-use in these territories. The German Court issued a decision a few months ago rejecting Ferrari’s argument that it has made use of its registered German trade mark for TESTAROSSA by providing after sales services and maintenance of the cars, certifying the authenticity of used TESTAROSSA vehicles and trading in second-hand TESTAROSSA vehicles and spare parts. The Court found that these services were provided under the trade mark FERRARI, and not in any significant or meaningful manner under the trade mark TESTAROSSA.
Ferrari’s TESTAROSSA trade mark may yet remain protected in the European Union for its automobiles, through Ferrari’s International Registration No.910752, as the European Union trade mark office took a different view on the non-use issue earlier this year compared to the German Court. However, this decision has been appealed since. Nonetheless this indicates that Ferrari’s rights to TESTAROSSA are vulnerable and unless it can pre-empt an attack Ferrari may be faced with loss of its rights to TESTAROSSA across a wider geography.
This situation illustrates the fact that manufacturers and owners must be vigilant to monitor their registered rights and use their trade marks for the goods or services for which they are registered or risk loss of their registered rights. The heritage, legacy and renown of a trade mark will not save it from being expunged from the trade mark register if it cannot be shown to have been used sufficiently or appropriately from the stand point of trade mark use or if use is found to be merely token use at best. It is in the public interest that trade marks that are not used be removed, and most trade mark legislation worldwide makes provision for cancelling a registration for non-use. It is not uncommon in the automotive industry to revive iconic brands after a number of years of non-use, however owners could instead face a situation where the registration of those trade marks is irrevocably lost in the meantime if they allow their marks to fall to disuse.