# C_2019054EN.01000801.xml

| 11.2.2019 | EN | Official Journal of the European Union | C 54/8 |
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11.2.2019

EN

Official Journal of the European Union

C 54/8

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Request for a preliminary ruling from the Oberlandesgericht Düsseldorf (Germany) lodged on 16 November 2018 — Ferrari S.p.A. v DU

(Case C-721/18)

(2019/C 54/11)

Language of the case: German

Referring court

Oberlandesgericht Düsseldorf

Parties to the main proceedings

Applicant: Ferrari S.p.A.

Defendant: DU

Questions referred

| 1. | When assessing the question of whether use is genuine in terms of nature and extent within the meaning of Article 12(1) of Directive 2008/95/EC (1) in the case of a trade mark which is registered in respect of a broad category of goods, in this case land vehicles, in particular motor cars and parts thereof, but is actually only used in respect of a particular market segment, in this case high-priced luxury sports cars and parts thereof, is account to be taken of the market for the registered category of goods overall or may account be taken of the particular market segment? If the use in respect of the particular market segment is sufficient, is the trade mark to be maintained in relation to that market segment in cancellation proceedings due to revocation? |
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1.

When assessing the question of whether use is genuine in terms of nature and extent within the meaning of Article 12(1) of Directive 2008/95/EC (1) in the case of a trade mark which is registered in respect of a broad category of goods, in this case land vehicles, in particular motor cars and parts thereof, but is actually only used in respect of a particular market segment, in this case high-priced luxury sports cars and parts thereof, is account to be taken of the market for the registered category of goods overall or may account be taken of the particular market segment? If the use in respect of the particular market segment is sufficient, is the trade mark to be maintained in relation to that market segment in cancellation proceedings due to revocation?

| 2. | Does the sale of used goods which have already been released onto the market by the trade mark proprietor in the European Economic Area constitute use of the trade mark by the trade mark proprietor within the meaning of Article 12(1) of Directive 2008/95/EC? |
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2.

Does the sale of used goods which have already been released onto the market by the trade mark proprietor in the European Economic Area constitute use of the trade mark by the trade mark proprietor within the meaning of Article 12(1) of Directive 2008/95/EC?

| 3. | Is a trade mark which is registered not only in respect of a product, but also in respect of parts of that product also used in a right-maintaining manner in respect of the product if that product is no longer sold, but there are still sales of trademarked accessory and replacement parts for the trademarked product sold in the past? |
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3.

Is a trade mark which is registered not only in respect of a product, but also in respect of parts of that product also used in a right-maintaining manner in respect of the product if that product is no longer sold, but there are still sales of trademarked accessory and replacement parts for the trademarked product sold in the past?

| 4. | When assessing whether there is genuine use, is consideration also to be given to whether the trade mark proprietor offers services which do not use the trade mark but are intended for the goods already sold? |
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4.

When assessing whether there is genuine use, is consideration also to be given to whether the trade mark proprietor offers services which do not use the trade mark but are intended for the goods already sold?

| 5. | When examining the use of the trade mark in the Member State concerned (in this case Germany) within the meaning of Article 12(1) of Directive 2008/95/EC, pursuant to Article 5 of the German-Swiss Treaty of 13 April 1892 on the reciprocal protection of patents, designs and trade marks, are uses of the trade mark in Switzerland also to be taken into consideration? |
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5.

When examining the use of the trade mark in the Member State concerned (in this case Germany) within the meaning of Article 12(1) of Directive 2008/95/EC, pursuant to Article 5 of the German-Swiss Treaty of 13 April 1892 on the reciprocal protection of patents, designs and trade marks, are uses of the trade mark in Switzerland also to be taken into consideration?

| 6. | Is it compatible with Directive 2008/95/EC to require the trade mark proprietor against which action is being taken due to revocation of the trade mark to comprehensively explain the use of the trade mark, but to impose the risk of evidence not being furnished on the cancellation applicant? |
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6.

Is it compatible with Directive 2008/95/EC to require the trade mark proprietor against which action is being taken due to revocation of the trade mark to comprehensively explain the use of the trade mark, but to impose the risk of evidence not being furnished on the cancellation applicant?

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(1)  Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25).

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