ECJ and Ferrari trademark: Proof für Use of a trademark also by parts

Proof of use of a trademark can also be provided by individual parts and accessories – and also by used goods, the ECJ ruled today in the case of a Ferrari trademark. A remarkable judgement – not only for car manufacturers – because German principles contradict EU law in important aspects.

ECJ: German principles against EU law

In today’s judgment, the ECJ ruled on questions referred for a preliminary ruling in cancellation proceedings against the Ferrari trademark Testarossa. However, the focus was not on the Ferrari trademark but on important aspects of German principles of trademark law and procedural rules.

In questions of the burden of proof for the use of a trademark and the agreement DE with Switzerland, German principles contradict EU law, the ECJ ruled today. Moreover, proof of use of a trademark can also be furnished by individual parts and accessories – and also by used goods. This is a remarkable judgement of the ECJ following requests for this preliminary ruling from Germany.

Facts to the main proceedings “Ferrari trademark”

Ferrari is the proprietor of the mark Testarossa, registered as an international trademark at WIPO since 1987 for goods in Nice Class 12, and since 1990 it has also been registered in Germany for other goods in Nice Class 12.

From 1984 to 1991 Ferrari marketed a sports car model under the name “Testarossa” and until 1996 the successor models 512 TR and F512 M. After a long break, in 2014, Ferrari produced a unique model with the designation “Ferrari F12 TRS”.

Those are the facts of the main proceedings, in which an application was made in Germany for cancellation of the two Testarossa trademarks for lack of use of the mark. The relevant period was between 2011 and 2016.

Genuine use of the Ferrari marks in dispute

The Landgericht Düsseldorf (Germany), the court of first instance, ordered Ferrari to agree to the cancellation of the two marks in dispute, stating that Ferrari had not been able to prove use of the mark in the requisite manner for the relevant period.

Ferrari objected. During the period relevant for the assessment of the use of the marks at issue, Ferrari had used the marks in dispute to identify spare parts and accessories for the very expensive luxury sports cars previously marketed under those marks, and that was proved. However, the Düsseldorf Regional Court did not consider that the marks in dispute had been used again, since Ferrari’s rights in the marks had been exhausted after the products bearing them had been put on the market for the first time and Ferrari was not in a position to prohibit further commercialisation of the products.

Ferrari then brought proceedings before the Oberlandesgericht Düsseldorf, which, however, stayed the main proceedings concerning Ferrari and the Testarossa trade marks. The Oberlandesgericht referred several questions to the Court of Justice for a preliminary ruling, asking the highest European Court of Justice (ECJ) to interpret Articles 12(1) and 13 of Directive 2008/95.

Proof of use also by means of individual parts and accessories

The most important aspect of the request for referral was the question whether, in the case of a trade mark registered for a group of goods and their component parts, genuine use of the mark can be proved even for only part of that group, such as, for example, only for luxury goods or only for the accessories of some goods. This is highly relevant for all car manufacturers, as this is often the case when the mark designates a model of car whose production has been discontinued.

The ECJ’s answer to this question is a clear “yes”. A trade mark registered for a group of goods and its component parts must be regarded as having been put to genuine use within the meaning of Article 12(1) in relation to all the goods falling within that group and its component parts, even if it has been used only in part, such as only for luxury goods or only for accessories or spare parts for some goods, the Court of First Instance ruled.

Who bears the burden of proof?

The question of who bears the burden of proof has also been referred to the ECJ, as this is assessed differently between German law and EU law.

According to the general principles applicable in Germany, in the case of an action for cancellation due to non-use of a trade mark, the burden of proof for the lack of use of the trade mark lies with the plaintiff. The trademark owner only has to provide a substantiated and comprehensive account of how he has used the trademark.

However, this does not apply under Article 12(1) of the EU Directive, the ECJ ruled today. The ECJ ruled that the trademark owner of an Uniontrademark bears the burden of proof that the trademark has been “put to genuine use” within the meaning of this provision. This also applies to proof of genuine use of a trade mark registered in a Member State.

The Court added that the question of the burden of proof of genuine use in proceedings for cancellation of a trademark for non-use does not fall within the competence of the Member States. According to the Court, Recitals 6 and 10 of Directive 2008/95, which grant to the Member States sovereign procedural rules relating to trade mark protection, do not apply to the cancellation of Union trade marks, since otherwise protection may vary according to the national law concerned.

Thus, today’s decision of the ECJ is contrary to the general German principles of the Code of Civil Procedure with regard to the burden of proof.

And what about Proof of use by second-hand vehicles and goods already on the market?

But is it possible to prove use of the trade mark by second-hand vehicles and goods already on the market and used?

The ECJ affirmed this. A trademark can be put to genuine use by its owner by marketing used goods marketed under that trade mark, the European Court ruled. This is the case if the trademark owner actually uses the trademark in accordance with its main function, namely to guarantee the identity of the origin of the goods. This is also confirmed by Article 7(1) of Directive 2008/95, which provides for exhaustion of the rights conferred by the trademark, the ECJ ruled.

Agreement between DE and Switzerland contradicts EU law

An agreement between Germany and Switzerland was also discussed in this case. This is because the use of a trademark in Switzerland is not sufficient to prove its genuine use in Germany, the ECJ ruled in December 2013 (“Rivella”, C:2013:826). However, this is contradicted by the case law of the BGH (Germany), which decided that the 1892 Convention remains in force and, in view of Art. 351 TFEU, should be applied by the German courts.

This Convention between Germany and Switzerland seems somewhat out of date today, as it grants reciprocal patent, design and trademark protection.

In that context, the Court OLG Düsseldorf pointed out that the application of the Convention with Switzerland could give rise to difficulties if a German trademark could not be cancelled under German law but could nevertheless not be invoked against the registration of a Union trademark.

ECJ: BGH may apply incompatible agreement

In today’s judgment, the ECJ confirms the difficulties identified by the OLG Düsseldorf with the agreement between DE and Switzerland, which is an inevitable consequence of the agreement with Switzerland.

The ECJ recommended that the Federal Republic of Germany should remove the incompatibility of the 1892 Convention “if necessary by denouncing it” (quoted from the judgement). Germany was also obliged to do so under Article 351(2) TFEU. But, until one of the means mentioned in Article 351(2) TFEU allows to remove any incompatibilities between the TFEU Treaty and the Convention, the court of an EU Member State (such as the Federal Court of Justice) may apply an incompatible convention, the ECJ added.

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