Dat of publication: 22/08/2017
The action has been brought on the grounds of non-use of the trademark, illustrating both the importance and challenge of maintaining heritage brand names through regular use, as Novagraaf’s Theo Visser explains.
Ferrari retailed a car under the name Testarossa between 1984 and 1996. The name was a reference to the red caps on the cylinder heads. The 12-cylinder car could reach a speed of 290 kilometers per hour. Elton John and Alain Delon were both famous fans of the car, as well as the character Sonny Crockett in the Miami Vice TV series. Despite its illustrious past, however, the brand name is now at risk.
Kurt Hesse, owner of Autec AG in Nuremberg, is seeking to use the name Testarossa for e-bikes and bicycles, and submitted a trademark application to protect such use. Ferrari opposed the registration.
An unexpected result?
The Düsseldorf Court recently ruled that Ferrari could not appeal to the application(s) because the Testarossa brand has not been actively used in the past five years. Ferrari’s argument that it has used the brand for after-sales and maintenance of the car was rejected. According to the court, these services are supplied under the brand name Ferrari.
The court made it clear in its ruling that this verdict is of importance to all owners of well-known brands that are no longer in use. Trademark law states that companies must actively use their trademarks if they wish to maintain them; otherwise, they may be subject to a third-party request for removal (removal from the trademark register).
Accordingly, Hesse has requested the removal of the Ferrari Testarossa trademark in both Germany and in the EU. Ferrari is still able to appeal against the verdict, but it must be able to show actual use in order to oppose the cancellation of such a valuable mark.