When assessing the question of whether use is genuine in terms of nature and extent within the meaning of Article 12(1) of [Directive 2008/95] in the case of a trade mark which is registered in respect of a broad category of goods, in this case land vehicles, in particular motor cars and parts thereof, but is actually only used in respect of a particular market segment, in this case high-priced luxury sports cars and parts thereof, is account to be taken of the market for the registered category of goods overall or may account be taken of the particular segment? If the use in respect of the particular market segment is sufficient, is the trade mark to be maintained in relation to that market segment in cancellation proceedings due to revocation?

A trademark is considered genuinely used for all goods in a category if used for some unless those goods are seen as an independent subcategory.

Does the sale of used goods which have already been released onto the market by the trade mark proprietor in the European Economic Area constitute use of the trade mark by the trade mark proprietor within the meaning of Article 12(1) of [Directive 2008/95]?

A trademark can be genuinely used when the proprietor resells second-hand goods under that mark.

Is a trade mark which is registered not only in respect of a product, but also in respect of parts of that product also used in a right-maintaining manner in respect of the product if that product is no longer sold, but there are still sales of trademarked accessory and replacement parts for the trademarked product sold in the past?

A trademark used for replacement parts is genuine if not seen as an independent subcategory of the original product.

When assessing whether there is genuine use, is consideration also to be given to whether the trade mark proprietor offers services which do not use the trade mark but are intended for the goods already sold?

A trademark is genuinely used if services related to goods are provided under that mark.

When examining the use of the trade mark in the Member State concerned (in this case Germany) within the meaning of Article 12(1) of [Directive 2008/95], pursuant to Article 5 of the [Convention of 1892], are uses of the trade mark in Switzerland also to be taken into consideration?

Use in Switzerland is considered until incompatibilities with EU law are resolved, as per Article 351 TFEU.

Is it compatible with [Directive 2008/95] to require the trade mark proprietor against which action is being taken due to revocation of the trade mark to comprehensively explain the use of the trade mark, but to impose the risk of evidence not being furnished on the cancellation applicant?

The burden of proof for genuine use rests on the trademark proprietor.

Genuine use includes use for parts if not perceived as independent subcategories.

European Court of Justice (Fourth Chamber) · 22 oktober 2020 · Judgment · Preliminary ruling

(Reference for a preliminary ruling – Approximation of laws – Trade marks – Directive 2008/95/EC – Article 12(1) – Genuine use of trade mark – Burden of proof – Article 13 – Proof of use ‘in respect of some of the goods or services’ – Trade mark covering a car model the production of which has stopped – Use of the trade mark in respect of replacement parts as well as for services relating to that model – Use of the trade mark for used vehicles – Article 351 TFEU – Convention between the Federal Republic of Germany and the Swiss Confederation – Reciprocal protection of patents, designs and trade marks)

Rechtsvraag

The central legal issue is whether Ferrari's trade marks were put to 'genuine use' under Article 12(1) of Directive 2008/95/EC, specifically in relation to high-priced luxury sports cars, replacement parts, resale of used goods, and services connected to previously sold goods.

Regel

Article 12(1), Directive 2008/95/EC (Grounds for revocation due to non-use of a trade mark for a continuous period of five years)
Article 13, Directive 2008/95/EC (Revocation or invalidity covering only some of the goods or services)
Article 351 TFEU (Allows for application of pre-existing international agreements)
Recital 10, Directive 2008/95/EC (Ensures the same protection under the legal systems of all Member States)

Conclusie

The Court concluded that Ferrari's trade marks could be considered to have been put to 'genuine use' under Article 12(1) of Directive 2008/95/EC, even if only used for high-priced luxury sports cars or their replacement parts. Genuine use could also include resale of used goods and provision of services under the mark. The burden of proof for genuine use rests with the proprietor, and pre-existing international agreements can be considered until resolved.

Tijdlijn

22-07-1987 Ferrari's trade mark was registered with the World Intellectual Property Organisation as international trade mark 515107 for vehicles and parts.
07-05-1990 Ferrari's trade mark was registered with the German Patent and Trade Mark Office for land vehicles, aircraft, water vehicles, and parts.
1984 Ferrari began selling the sports car model 'Testarossa'.
1991 Ferrari stopped producing the 'Testarossa' model.
1996 Ferrari stopped producing the follow-up models 512 TR and F512 M.
2014 Ferrari produced a one-off piece with the model designation 'Ferrari F12 TRS'.
2011 Between 2011 and 2016, Ferrari achieved a turnover of approximately EUR 17,000 with replacement parts sold for vehicles bearing the trade marks at issue.
08-11-2018 The Oberlandesgericht Düsseldorf made two requests for a preliminary ruling concerning the interpretation of Article 12(1) of Directive 2008/95/EC.
16-11-2018 The Court of Justice of the European Union received the preliminary ruling requests from the Oberlandesgericht Düsseldorf.
22-10-2020 The Court of Justice of the European Union delivered its judgment on the preliminary ruling requests.