A trade mark has been put to 'genuine use' for all goods if it is used for certain of the goods, such as very high-priced luxury sports cars or only for parts or accessories of certain of the goods: the mere fact that cars for which a trade mark has been used may belong to a specific market of 'sports cars' is not sufficient for them to be regarded as an independent subcategory of the class of goods. A trade mark has been put to ‘genuine use’ by the propietor when: the proprietor resells second-hand goods put on the market under that mark and the proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark. Article 351 TFEU allows a court of a Member State to apply a convention concluded before 1 January 1958: until such time as any incompatibilities between the TFEU and that Treaty can be eliminated. Burden of proof that a trade mark has been put to ‘genuine use’ rests on the proprietor of that mark: it is the proprietor of the mark at issue which is best placed to adduce evidence.
Ferrari is the propietor of the international and German trade marks 'Testarossa' and sold a sports car model called Testarossa from 1984 to 1991. The Landgericht Düsseldorf ordered that Ferrari's trade marks be removed from the register on the ground that, over an uninterrupted period of five years, Ferrari had not made genuine use of those marks in Germany and Switzerland for the goods in respect of which they were registered. Ferrari brought an action against that decision. This gave rise to references for a preliminary ruling concerning 'genuine use'. Between 2011 and 2016, Ferrari supplied parts and accessories for the vehicles bearing the trade marks. The question is whether that is sufficient to constitute 'genuine use'.
The Court answers the first and third questions referred for a preliminary ruling as follows. Articles 12(1) and 13 of Directive 2008/95 must be interpreted as meaning that a trade mark registered in respect of a category of goods and spare parts for that category has been put to 'genuine use' in relation to all the goods in that category and its spare parts where such use is restricted to certain of those goods, such as very high-priced luxury sports cars, or to spare parts or accessories for certain of those goods only, unless the consumer who wishes to purchase the same goods understands them as an independent subcategory of the category of goods for which the trade mark is registered. The mere fact that the cars on which the trade mark has been used can be classified as sports cars is not sufficient for it to be considered that they belong to an independent subcategory of cars. The fact that Ferrari has used the trade marks for parts and accessories of "very expensive luxury sports cars" is therefore not sufficient for it to conclude that it has used those marks only for some of the goods covered by those marks.
The Court considers that article 12(1) of Directive 2008/95 must be interpreted as meaning that there is genuine use of a trade mark by its proprietor where the proprietor sells second-hand goods marketed under that trade mark and that there is also genuine use of a trade mark by its proprietor where it provides certain services relating to goods already sold under that trade mark, provided that those services are provided under that trade mark.
As regards article 351 TFEU, the Court holds that that provision allows a court or tribunal 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, 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 it is possible to eliminate any incompatibilities between the TFEU and that convention.
Finally, the Court holds that the burden of proof that a trade mark has been put to genuine use rests with its proprietor.
Nelisa de Bruin