The General Court of the European Union recently issued two landmark rulings, concerning the meaning of “genuine use” of a trademark under EU law, that are particularly significant for brand owners in the luxury goods, automotive and heritage fashion industries as well as in any sector in which the second-hand market is substantial and products retain value over time.

On 2 July 2025, the General Court of the European Union (GCEU in the following) delivered its judgments in cases T-1103/23 and T-1104/23; both cases concern appeals filed by Italian luxury car maker Ferrari against the revocation of two European Union trademark registrations of its TESTAROSSA word mark – one covering inter alia cars, spare parts, accessories, and the other covering scale models.

Ferrari used the TESTAROSSA trademark for its iconic Testarossa car model, which went out of production in 1996. A request for revocation of the European Union registrations for TESTAROSSA for non-use during the 5 years running from September 2010 to September 2015 was filed in 2015; the Cancellation Division of the European Union Intellectual Property Office (EUIPO) granted the revocations and its decisions were later upheld the Board of Appeal of the EUIPO.

Genuine Use of a trademark under EU law

In essence, the two cases turn on the interpretation of the concept of “genuine use” of a trademark under European Union trademark law, which provides that a trademark registration can be revoked if within a continuous period of five years it has not been put to genuine use in the EU, by its proprietor or with its consent, in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use. In particular, the GCEU focuses on the meaning of trademark use “with the consent of the proprietor” and “implicit consent”.

Ferrari argued that in spite of the fact that the Testarossa car model went out of production in 1996, it had continued to use the TESTAROSSA trademark during the contested period of time (September 2010 to September 2015), since it had cooperated with car dealers and scale model producers selling second-hand and scale models Testarossa cars.

The GCEU found that, based on the case law of the Court of Justice of the European Union, the resale of a second-hand or scale model product bearing a trademark can be considered “genuine use”, upon condition that the trademark is used as a guarantee of the identity of the origin of the goods for which it was registered when the second-hand goods are resold, and that use occurs with the consent, albeit implicit, of its proprietor.

Although none of the second-hand car dealers were officially licensed by Ferrari, the Italian car-maker was able to prove, by producing documents and invoices, that it carried on using the TESTAROSSA trademark during the contested period on the certificates which it provided, against payment, to those dealers in several European Union states; the GCEU considered this sufficient proof of Ferrari’s implicit consent to the use of the contested trademark to guarantee the identity of the origin of the goods. As to toy cars, Ferrari relied on the licensing agreements it entered into with the producers. Although the agreements did not explicitly mention the trademark TESTAROSSA, the General Court took the view that Ferrari had implicitly consented to its use, within the context of said licenses.

The GCEU took the view that for the same reason the use of the TESTAROSSA trademark on spare parts certified as authentic by Ferrari was also to be considered genuine use.

Based mainly on these findings, the GCEU annulled the contested decision of the EUIPO’s Board of Appeal.

The takeaways for brand owners

These landmark rulings are particularly significant for trademark owners in the luxury goods, automotive, heritage fashion and high-end watch industries, and in any other sector in which the second-hand market is substantial and products retain value over time. The decisions offer crucial protection for iconic and historical brands facing revocation challenges when direct production has ceased but commercial activity continues through resale channels or merchandising.

Brand owners should be aware that genuine use can be established through authorized second-hand sales, even with implicit consent, making it essential to maintain organized resale networks through authorized dealers. Implementing authentication and certification programs for vintage or discontinued products strengthens the trademark’s source-indicating function and provides valuable evidence of use.

For products no longer in production, maintaining an active supply chain for original spare parts and accessories through authorized distributors constitutes genuine use and should be carefully documented. When licensing the trademark for merchandise, contracts must require clear indications such as “officially licensed product” to demonstrate the owner’s control and consent.

Evidence requirements are strict: trademark owners must systematically preserve concrete documentation including invoices for sales or services provided to the second-hand dealers, authorized dealer agreements, certificates of authenticity, licensing contracts, catalogues, and advertising materials. As to merchandising, licensing agreements should specifically mention the trademark used by the authorized third party.

The decision confirms that use assessment must consider sector-specific practices, product nature, market characteristics, and frequency of use—particularly relevant for markets with long product lifecycles. Brand owners should conduct annual audits to ensure documented evidence of use exists for all registered trademarks over the preceding five years, rather than waiting for revocation attacks to gather proof. This proactive “heritage management” approach, structuring controlled networks around historical brands, enables owners to combat opportunistic revocation actions even when direct manufacturing has ceased, ensuring both the commercial and the reputational value of iconic trademarks.

Thanks to Gabriella Rubino for contributing to this news item.

Further information

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