A German court has ruled that Ferrari, famous maker of Italian sports cars, must give up its TESTAROSSA trademark in that country. The ruling will come as a blow to one of the most famous trademarks in automotive history and serves as a warning that brand owners should not assume their legacy marks are safe, no matter how well known they are.
Ferrari used the TESTAROSSA trademark from 1984 until 1991, when TESTAROSSA production ended. During that time, the TESTAROSSA became an iconic sports car known to motor enthusiasts everywhere. However, sports cars bearing the TESTAROSSA trademark have not been sold by Ferrari (as opposed to within the second hand market) since it went out of production.
A German toy manufacturer argued that the trademark was no longer entitled to protection because it had fallen out of use since the end of TESTAROSSA production. Ferrari argued that the mark has continued to be used in connection with its ongoing maintenance and restoration services for existing vehicles. However, the German court found that Ferrari's use of the trademark during the preceding five years was insufficient to maintain protection of its registered trademark.
Expunging registered marks for non-use is a common phenomenon and is not unique to Germany - most jurisdictions with similar trademark regimes have equivalent measures in place, although the details may differ from country to country. So while it may be surprising that trademark protection for such a widely recognized automotive brand could be extinguished, the situation is not unique and brand owners of legacy marks should be vigilant about keeping those marks in use if they want to protect them.
In Canada, trademarks which have been registered but out of use for at least three years are similarly vulnerable to being revoked. The process is simple and inexpensive to initiate - anyone can do so for minimal cost and, crucially within Canada, it is common practice for the identity of that person or company to be hidden by the name of a law firm. This means that registered marks can be attacked potentially without fear of reprisals. If the registered mark owner cannot provide evidence of use within the last three years, the mark will be revoked (or narrowed, if use can be shown for some goods or services but not all of them).
The concept of revoking marks that are out of use is designed to rid the Register of "dead wood" and free up use of those marks for third parties that might otherwise be blocked. The warning for owners of legacy marks is clear, though - maintain use of the mark or risk losing your registered rights.
There aren't many better known sports car models than TESTAROSSA from the last 20 to 30 years, but in Germany the trademark may now have been lost. Unless Ferrari put the TESTAROSSA back into production on at least a limited basis, the same fate may befall the iconic sports car brand in other jurisdictions as well.
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