Ferrari TESTAROSSA – brands also have an expiry date
Only those who use a trademark regularly and demonstrably can claim it for themselves on a long-term basis. As with many companies, it was common practice for Ferrari to repeatedly renew brands of older models at the trademark offices and thus maintain trademark protection, at least declaratively. As a rule, this works well as long as there is no plaintiff who examines the right-preserving use of a trademark or questions it in a dispute.
Such a conflict has recently led to a judgment at the Düsseldorf Regional Court, which is not surprising, at least for trademark law experts. The original trademark application of Ferrari should be cancelled according to the present judgement, unless the Higher Regional Court decides otherwise.
The Nuremberg toy manufacturer Kurt Hesse had already applied for trademark rights for the name TESTAROSSA in the trademark classes 07, 08, 12, 18, 21 and 28 in the years 2013 and 2014. After Ferrari had filed an objection to this application, Hesse in turn applied for the cancellation of the Ferrari trademark TESTAROSSA, as it was not used in a way that would preserve the rights. The Düsseldorf Regional Court granted this request and Hesse is now planning to launch e-bikes, bicycles and razors under the name Testarossa. Accordingly, Ferrari has to agree to the cancellation of the German and the international trademark and may no longer use the name in these classes – unless an OLG decision to the contrary is made.
The Düsseldorf ruling is a clear signal for all trademark owners and shows how important it is to use trademarks in a way that preserves the rights of the trademark owner, to affix them to products and, in addition to renewing trademark protection, to ensure that in the addressed public not only a reputation but also a use of the trademark can be proven.
For example, Porsche used to issue an anniversary model of its 911 series every five years and also affixed the name 911 as lettering on the tailgate of the vehicle in order to ensure that the right-preserving use of the 911 trade mark is guaranteed by affixing it to the vehicle. The 911 lettering was otherwise not found on the 911 series, which were not special editions. In the meantime, Porsche has changed this practice and switched to affixing the product name 911 on almost all 911 models.
Thomas Schiefer as managing partner of innomark GmbH comments at irregular intervals on brand topics currently under discussion.