“Ferrari”

Decision of the European Court of Justice (Fourth Chamber) 22 October 2020 – Cases Nos. C–720/18 and C–721/18, ECLI:EU:C:2020:854

  1. 1.

    Article 12(1) and Article 13 of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to ‘genuine use’ within the meaning of Article 12(1), in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered.

  2. 2.

    Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark.

  3. 3.

    Article 12(1) of Directive 2008/95 must be interpreted as meaning that a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark.

  4. 4.

    The first paragraph of Article 351 TFEU must be interpreted as allowing a court of a Member State to apply a convention concluded between a Member State of the European Union and a non-member State before 1 January 1958 or, for States acceding to the European Union, before the date of their accession, such as the Convention between Switzerland and Germany concerning the Reciprocal Protection of Patents, Designs and Trade Marks, signed in Berlin on 13 April 1892, as amended, which provides that the use of a trade mark registered in that Member State in the territory of the non-member State must be taken into consideration in order to determine whether that mark has been put to ‘genuine use’ within the meaning of Article 12(1) of Directive 2008/95, until such time as one of the steps referred to in the second paragraph of Article 351 TFEU makes it possible to eliminate any incompatibilities between the TFEU and that convention.

  5. 5.

    Article 12(1) of Directive 2008/95 must be interpreted as meaning that the burden of proof that a trade mark has been put to ‘genuine use’, within the meaning of that provision, rests on the proprietor of that mark.

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Ferrari SpA v. DU Directive 2008/95/EC, Arts. 12(1), 13; Treaty on the Functioning of the European Union, Art. 351; Convention between Switzerland and Germany concerning the Reciprocal Protection of Patents, Designs and Trade Marks, Berlin, 13 April 1892. “Ferrari”. IIC 52, 236–237 (2021). https://doi.org/10.1007/s40319-021-01020-6

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Keywords

  • Genuine use
  • Burden of proof
  • Use in respect of some of the goods or services
  • Use for a car model the production of which has stopped
  • Use in respect of replacement parts as well as for services relating to that model
  • Use for used vehicles