The EU General Court annuls the EUIPO Resolution which revoked Ferrari’s trademark rights over its famous TESTAROSSA model due to a lack of genuine use.
Last July 2nd 2025, the EU General Court annulled EUIPO’s Resolution issued by the Board of Appeal by which revoked Ferrari’s trademark “TESTAROSSA” due to a lack of genuine use (Case T-1103/23). The action faced by Ferrari had the important particularity that the Testarossa model was only in production between 1984 and 1996, with almost 10,000 units produced, so nowadays it is only possible to acquire it second-hand.
In the administrative proceedings, the EUIPO found that there had been no genuine use of the trademark as Ferrari had not produced or distributed any new or second-hand cars under the TESTAROSSA trademark during the relevant period. In EUIPO’s view, Ferrari was unable to prove that the second-hand sales by third parties had been made with its consent. However, the General Court reached a different conclusion.
Firstly, although on the basis of the principle of exhaustion of trademark rights it could be understood that the resale of second-hand goods does not imply genuine use of the trademark, this does not represent an absolute. Moreover, the General Court recalls that use of the trademark by third parties with the consent of the proprietor must be regarded as genuine use.
Generally, if the owner himself acknowledges the use of the trademark by a third party and does not oppose it, there is a presumption of consent, but this presumption cannot be extrapolated to second-hand sales, so it is important to take into account the circumstances of the case and the characteristics of the market.
In this case, Ferrari demonstrated that the TESTAROSSA models were sold through authorized dealers and distributors and that there was therefore an economic and contractual link with them. It should be noted that the vintage collectible luxury high-end models sector has important particularities, where having authorisation, certificates and guarantees that the cars have their commercial origin from the original manufacturer is crucial for consumers.
Thus, the fact that Ferrari issues certificates of authenticity makes it possible to confirm genuine use of the TESTAROSSA trademark, since, although it is not proof of the sale of cars as such, it is a service directly linked to them aimed at meeting the needs of consumers of the particular product. Moreover, the invoices issued for such certificates included not only the Ferrari brand name, but also the model, with the homonymous trademark, TESTAROSSA.
This judgement sets an important precedent, especially for the motor and luxury goods sector, where it is not uncommon to come across trademarks for limited editions which, by their nature, make it difficult for rightsholders to prove genuine and continuous over time.
Jorge Díaz Rodríguez
Lawyer
