Ferrari has nabbed a win in a trademark case that centers on its legendary Testarossa model name. In a significant decision for the protection of heritage branding in auto and beyond, the General Court of the European Union has overturned a move to strip the Italian automaker of its rights in the TESTAROSSA trademark, siding with the automaker in a years-long fight over whether vintage icons can still hold weight in the trademark realm. The judgment annuls a 2023 EUIPO ruling and offers insight on how legacy marks can endure long after the original products have left the production line.
Background in Brief: Ferrari originally secured a trademark registration for the word mark TESTAROSSA in the EU in 2006, covering a broad range of goods in Class 12, including automobiles, structural parts, engines, and accessories. While Ferrari stopped making the Testarossa model in 1996, its legacy has endured through second-hand sales and Ferrari’s dedicated restoration and certification programs.
That legacy came under threat in 2015, when Kurt Hesse sought to revoke the registration due to alleged non-use. The European Union Intellectual Property Office (“EUIPO”)’s Cancellation Division agreed in part, revoking the mark for most Class 12 goods but preserving it for “automobiles.” Both parties appealed, with Hesse seeking full revocation and Ferrari aiming to preserve rights for parts and accessories, as well.
In 2023, the EUIPO’s Fifth Board of Appeal sided with Hesse, cancelling the registration in its entirety – including for automobiles – on grounds of insufficient genuine use during the five-year statutory period. Ferrari challenged that decision before the General Court.
Second-Hand Sales and Certification
At the heart of the dispute was a critical question: Can the sale of vintage cars and associated services constitute “genuine use” of a trademark under EU law, even when no new cars have been sold under that mark for decades? The General Court ruled in Ferrari’s favor. Among the key takeaways from its July 2 decision …
> Implied Consent from Ferrari: The court determined that sales of Testarossas by authorized Ferrari dealers during the relevant period were made with Ferrari’s implied consent. This relationship means that those sales counted as genuine trademark use – even if they involved second-hand goods.
> Certification Services Are Commercial Use: Ferrari’s Classiche certification program, which verifies the authenticity of vintage models, was also considered a form of genuine trademark use of the Testarossa mark. The Court held that this paid service – provided directly by Ferrari – satisfied the test for public and outward use of the mark.
> Joint Use of Manufacturer and Model Marks is Normal in the Car Industry: The court rejected EUIPO’s argument that use of the TESTAROSSA name alongside the primary Ferrari brand diluted its trademark function. The court held that the combined use of these marks – the automaker’s name and the name of the specific car model – is standard practice in the automotive industry and sufficient to maintain trademark rights in the model name.
> Use for Parts and Accessories Also Counts: The court also overturned the Board’s dismissal of evidence related to Testarossa spare parts. It held that use of the trademark on original or licensed parts – especially when backed by Ferrari’s certification program – constitutes genuine use. At the same time, this use could also reinforce protection for the main category of “automobiles” under EU law.
A Boost for Heritage Brands
The court’s ruling sends a powerful message to legacy brands across sectors that rely on after-market activity, vintage services, and certified second-hand sales to preserve their intellectual property rights. While Ferrari’s core claim rested on a storied model last produced in the 1990s, the General Court made clear that brand usage tied to authorized resellers, certification programs, and genuine market presence – even in a resale context – can sustain trademark validity.
The decision also reinforces the Court of Justice’s earlier reasoning in another Ferrari case (C‑720/18 and C‑721/18), which established that use of a mark for replacement parts may constitute use for the entire category of goods.
THE TAKEAWAY: With more luxury brands entering the resale space and reviving archival designs, the General Court’s decision in Ferrari’s favor could have wide-reaching implications. By engaging in certified resale or refurbishment programs, brands may not only control quality and authenticity but also preserve valuable trademark rights that could otherwise lapse due to non-use. As resale becomes increasingly central to luxury strategy, this ruling (and others like it) may encourage more brands to actively treat vintage trademarks as assets worth maintaining.
The case is Ferrari SpA v. Hesse, T‑1103/23 (General Court (Eighth Chamber)).
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