Ferrari Wins Back Testarossa Trademark at EU Court

A 1991 Ferrari Testarossa is seen at a 2018 classic car show. (Photo via Vauxford/Wikipedia Commons)

LUXEMBOURG (CN) — Ferrari got the green light from the European Union’s high court Thursday to continue using the name of its iconic car, the Testarossa, even though the model has been discontinued.  

The European Court of Justice overturned a 2017 German court ruling revoking the luxury sports car maker’s trademark, which means “redhead” in Italian. The Luxembourg-based court found that, although the car itself hadn’t been manufactured since the 1990s, the company has continued to manufacture vehicle parts, so it can continue to own the brand name.

“A trademark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark,” the five-judge panel wrote. 

The Düsseldorf Higher Regional Court referred the case to the Court of Justice after a lower court agreed with German toy company Autec AG that Ferrari it should no longer have the rights to the Testarossa name because it hadn’t used the trademark in more than five years.

The two-door coupe was named for the 250 Testa Rossa race car, which won the 1957 World Sportscar Championship. With 10,000 cars made, it was Ferrari’s most mass-produced vehicle. The company argued that because it continued to manufacture replacement parts under the trademark, it should continue to own the name. 

Ferrari sold 17,000 euros ($20,000) worth of Testarossa parts between 2011 and 2017, but the German court found this was insufficient to constitute “genuine use.” Ferrari pointed out that only some 7,000 cars remain and, like many high-end luxury products, are not in everyday use. 

The EU’s high court agreed with the Italian company in Thursday’s decision.

“Despite the relatively low number of product units sold under the trademark concerned, the use which has been made of that mark has not been token, but constitutes use of that mark in accordance with its essential function, a use which … must be classified as ‘genuine use,’” the ruling states.  

The court also clarified that simply reselling a product does not constitute genuine use.

“However, if the proprietor of the trademark concerned actually uses that mark, in accordance with its essential function which is to guarantee the identity of the origin of the goods for which it was registered, when reselling second-hand goods, such use is capable of constituting ‘genuine use,’” the judges wrote.  

The Testarossa was popularized in the U.S. by the TV show “Miami Vice,” whose main character, Detective Sonny Crockett, drove the car during the police procedural’s third season. 

Ferrari lost a separate dispute with the European Intellectual Property Office, the agency responsible for registering trademarks in the EU, in July.

In 2007, the company trademarked the shape of its 250 GTO, despite not producing the car for more than 50 years. Another Italian luxury carmaker Ares Design, headquartered less than 15 miles from Ferrari, brought the successful complaint, arguing that since the company hadn’t used the shape in a vehicle for more than five years, it was no longer eligible to hold the trademark.

Ferrari has yet to indicate if it will appeal that decision to the Court of Justice.  

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