Judgment;Summary — ECLI:EU:C:2020:854
Date: 2020-10-22
Language of the case: German
Court formation: Fourth Chamber
Subject matter: Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Germany

Anonymised version 
Translation C-720/18 — 1 
Case C-720/18 
Request for a preliminary ruling 
Date lodged: 
16 November 2018 
Referring court: 
Oberlandesgericht Düsseldorf (Higher Regional Court of 
Düsseldorf, Germany) 
Date of the decision to refer: 
8 November 2018 
Appellant: 
Ferrari S.p.A. 
Respondent: 
DU 
  
HIGHER REGIONAL COURT OF DÜSSELDORF 
ORDER 
In the case of 
Ferrari S.p.A., [...] Modena, Italy, 
Defendant and appellant,    
[...] v 
DU, [...] Nuremberg, 
Applicant and respondent,    
EN 
REQUEST FOR A PRELIMINARY RULING OF 8. 11. 2018 — CASE C-720/18 
 
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[...], the 20th Civil Chamber of the Higher Regional Court of Düsseldorf [...] [Or. 
2] 
made the following order: 
I. 
The proceedings are stayed. 
II. 
The Higher Regional Court of Düsseldorf is referring the following questions to 
the Court of Justice of the European Union for a preliminary ruling: 
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 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? 
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 [Or. 3] 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? 
FERRARI 
 
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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? 
R e a s o n s 
A) 
1 The defendant is the proprietor of IR trade mark 515 107 
 
which was registered with the WIPO on 22 July 1987 and claims protection in 
respect of the following goods of Class 12: 
Véhicules; appareils de locomotion par terre, par air ou par eau, notamment 
automobiles et leurs parties. 
English: Vehicles; apparatus for locomotion by land, air or water, in particular 
motor cars and parts thereof. 
and whose protection extends to Germany. [Or. 4] 
2 The defendant sold a sports car model under the designation ‘Testarossa’ between 
1984 and 1991, and sold the follow-up models 512 TR and F512 M until 1996. In 
2014, it produced a one-off piece with the model designation ‘Ferrari F12 TRS’. 
On 3 December 2015, the applicant filed a request with the Deutsches Patent- und 
Markenamt (German Patent and Trade Mark Office) for the protection of the trade 
mark to be withdrawn due to revocation, which was opposed by the defendant. 
3 With the contested decision, the Landgericht (Regional Court) ordered the 
defendant to consent to the withdrawal of protection of its international trade mark 
with the registration number 515107 for 
Germany. 
4 As reasoning for its decision, the Regional Court essentially stated that the 
defendant had not made genuine use of the cancellation trade mark in an 
uninterrupted period of five years in Germany and Switzerland in connection with 
the goods in respect of which it is registered. It should be pointed out that there 
was only genuine use of a trade mark where it was used in accordance with its 
essential function, namely guaranteeing the identity of the origin of the goods and 
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services for which it was registered. The case-law of the Court of Justice 
regarding a broader function understanding did nothing to change this, as it related 
to the question of right-infringing use in the scope [of] identity protection. 
Although the burden of explanation and proof in respect of non-use lay with the 
cancellation applicant, the defendant was subject to a secondary burden of 
explanation, having to provide substantiated submissions and evidence that, 
contrary to the applicant’s assertion, genuine use had taken place. Contrary to the 
view taken by the defendant, the reputation of the cancellation trade mark also did 
nothing to change this. The defendant had failed to sufficiently demonstrate 
genuine use of the cancellation trade mark in respect of the registered goods. 
There was no submission whatsoever in respect of the goods ‘apparatus for 
locomotion by air or water’. Its submission regarding use in respect of ‘vehicles; 
apparatus for locomotion by land, in particular motor cars and components 
thereof’ was not sufficient for an assumption of genuine use in this regard. [Or. 5] 
5 The maintenance, servicing and restoration, including of ‘Testarossa’ vehicles, 
offered via the ‘Ferrari Classiche’ department took place under the Ferrari 
umbrella brand. In so far as these services are offered and provided in relation to 
‘Testarossa’ vehicles, this was mere brand naming. The same applied to the 
inspection and reconditioning services provided under the designation ‘Ferrari 
approved’. The offer of certifications was fundamentally applicable, but was 
provided under the Ferrari trade mark. The cancellation trade mark only appeared 
in so far as the certificate was issued in respect of a ‘Testarossa’ vehicle which 
had already been sold. The certification service was therefore not provided under 
this trade mark. 
6 The trade in manufacturer-certified, used vehicles likewise did not constitute 
right-maintaining use of the trade mark at issue. The trade itself did not take place 
under the cancellation trade mark. As the trade mark rights in relation to the 
vehicles themselves were exhausted, the sale of already exhausted goods did not 
constitute right-maintaining use. There was also no case of renewed release onto 
the market, since a different specific product was not involved. Use in image 
advertising likewise did not constitute right-maintaining use. 
7 According to the principles of the Ansul judgment of the Court of Justice, the sale 
of replacement parts under the designation Testarossa was, however, considered to 
be right-maintaining use. However, the replacement parts actually sold under that 
trade mark had only been sold in Germany and Switzerland to an extent that was 
not sufficient for right-maintaining use. Between 2011 and 2016, turnover of just 
under EUR 17 000.00 was achieved overall with such parts in Germany and 
Switzerland. It was true that consideration had to be given to the fact that high-
priced vehicles were involved, of which there were only 7 000 worldwide, with 
only a fraction thereof being found in Germany and Switzerland. High turnover 
figures were not to be expected in this respect. However, the only small extent of 
use in terms of volume was not based solely thereon, but was also based on the 
fact that the trade mark was only used for a fraction of the replacement, wear and 
accessory parts. [Or. 6] 
FERRARI 
 
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8 This is opposed by the defendant with its appeal, by which it claims that 
consideration was to be given to the fact that the product cycle did not end with 
the final sale. In this respect, the after-sales provision served for model sales, as 
this was expected with luxury vehicles and therefore the defendant could only sell 
its models if it guaranteed this comprehensive provision in the long term. 
Furthermore, low sales were already sufficient with a pure niche product. The 
Regional Court’s consideration that more intensive use was possible was already 
inadmissible from the outset. Furthermore, consideration was also to be given to 
the fact that it permanently offered the parts. The reconditioning, certification and 
subsequent sale likewise constituted use. It opines that no third party could 
perform such authenticity certification. The use in the certificates also took place 
not in respect of the service, but in respect of the accessory article certificate. 
Furthermore, the trade mark was also used in an identifying manner there. The 
Regional Court’s assumption that the marketing of used vehicles as collectors’ 
items was not to be taken into consideration because exhausted goods were 
involved was also incorrect, since the market for luxury cars as collectors’ items 
was an independent market segment. In this case, the certification meant that the 
manufacturer made a renewed commitment in respect of the vehicle. It 
corresponded to the practices of the automotive sector that the secondary trade 
mark referred to the type of vehicle. In this respect, there was also use as a trade 
mark if it was indicated in invoices and the like that the invoiced service related to 
a Testarossa vehicle. Furthermore, the burden of explanation and proof in respect 
of non-use lay solely with the applicant, because the cancellation trade mark was a 
well-known trade mark. [...] [no public interest in adjusting the register] [...] [the 
applicant’s abusive business model] 
9 The defendant requests that 
the contested judgment be amended and the action dismissed. 
The applicant requests that [Or. 7] 
the appeal be dismissed. 
10 He contests the asserted acts of use. The use assumed by the Regional Court in 
respect of replacement parts had not served to create or preserve an outlet for the 
sports cars or the replacement parts thereof identified by the ‘Testarossa’ trade 
mark. Furthermore, the Regional Court was, however, right to assume that the 
extent was not sufficient for genuine use. The Regional Court’s ruling was also 
correct in other respects. An expert could also issue an authenticity certificate for 
a used vehicle. Furthermore, in this respect the applicant also contests the asserted 
services on the basis of lack of information. [...] [comments regarding public 
interest, abuse of rights] 
B) 
11 The provisions of German law that are relevant to the assessment of the dispute 
are worded as follows: 
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Paragraph 26 of the Markengesetz (Trade Mark Act) — Use of the trade 
mark: 
(1) Where the assertion of rights from a registered trade mark or the upholding 
of the registration depends on the trade mark having been used, it must have been 
genuinely used in this country by its proprietor for the goods or services in respect 
of which it is registered unless there are legitimate grounds for non-use. 
(2) The use of the trade mark with the consent of the proprietor shall be deemed 
to constitute use by the proprietor. 
(3) The use of the trade mark in a form which deviates from the registration 
shall also be deemed to constitute use of a registered trade mark in so far as the 
deviation does not change the distinctive character of the trade mark. Sentence 1 
shall also be applied if the trade mark is likewise registered in the form in which it 
has been used. 
(4) Use in this country shall be deemed to also include the affixing of the trade 
mark to goods or their wrapping or packaging in this country if the goods are 
exclusively intended for export. [Or. 8] 
(5) In so far as use within five years from the time of the registration is 
necessary, in cases in which an opposition has been lodged against the 
registration, the time of the registration shall be substituted by the time of the 
conclusion of the opposition proceedings. 
Paragraph 49 of the Trade Mark Act — Revocation: 
(1) The registration of a trade mark shall be cancelled on request because of 
revocation if the trade mark has not been used after the date of registration in 
accordance with Paragraph 26 within an uninterrupted period of five years. The 
revocation of a trade mark may however not be claimed if use of the trade mark in 
accordance with Paragraph 26 has been commenced or resumed after the end of 
this period and prior to the filing of the application for cancellation. If however 
use is commenced or resumed following an uninterrupted period of five years of 
non-use within three months prior to the filing of the cancellation application, it 
shall remain unconsidered in so far as the preparations for the first or renewed use 
did not take place until the proprietor of the trade mark became aware of the fact 
that an application for cancellation may be filed. [...][details regarding the 
calculation of the period mentioned in sentence 3] 
(2) The registration of a trade mark shall furthermore be cancelled on request 
because of revocation if… [not relevant here] 
(3) If a ground for revocation only applies to some of the goods or services for 
which the trade mark has been registered, the registration shall be cancelled only 
for these goods or services. 
FERRARI 
 
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Paragraph 115 of the Trade Mark Act — Subsequent withdrawal of 
protection 
(1) For internationally registered trade marks, the application or the action for 
withdrawal of protection shall take the place of the application or the action for 
cancellation of a trade mark due to revocation (Paragraph 49) [...]. 
(2) If an application for withdrawal of protection in accordance with 
Paragraph 49(1) is made due to lack of use, the date of the entry in the register 
shall be substituted by the date 
1. of the receipt of the communication on the granting of protection by the 
International Bureau of the World Intellectual Property Organisation, or 
2. on which the time limit contained in Article 5(2) of the Madrid Agreement 
on Marks expired, if neither the communication under number 1 nor a 
communication on the provisional refusal of protection has been received at 
that time. [Or. 9] 
Paragraph 124 of the Trade Mark Act — Application, mutatis mutandis, of 
the provisions on the effect of trade marks internationally registered in 
accordance with the Madrid Agreement on Marks: 
Paragraphs 112 to 117 shall be applied mutatis mutandis to internationally 
registered trade marks whose protection has been extended to the territory of the 
Federal Republic of Germany in accordance with Article 3 of the Protocol relating 
to the Madrid Agreement on Marks with the proviso that the provisions of the 
Madrid Agreement on Marks listed in Paragraphs 112 to 117 are to be substituted 
by the corresponding provisions of the Protocol relating to the Madrid Agreement 
on Marks. 
Article 5 of the German-Swiss Treaty of 13 April 1892 on the reciprocal 
protection of patents, designs and trade marks: 
(1) The legal disadvantages which, under the laws of the contracting parties, 
occur when an invention has not been implemented, a design has not been 
reproduced or a trade mark has not been used within a certain period of time are 
precluded if the implementation, reproduction or use takes place in the territory of 
the other party. 
(2) The importing of a product manufactured in the territory of one party into 
the territory of the other party should not have adverse consequences in the latter 
in respect of the property right granted on the basis of an invention, design or 
trade mark. 
12 The success of the defendant’s appeal depends on the response to the questions 
referred, which concern the interpretation of Directive 2008/95/EC and the 
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corresponding provisions of Directive 2015/2436/EU. [...] [action admissible, no 
abuse of rights] [Or. 10] 
13 The resolution of the dispute therefore depends on the response to the question of 
whether the acts of use in Germany and Switzerland put forward by the defendant 
in respect of the relevant period constitute genuine use in the Member State 
concerned within the meaning of Article 12(1) of Directive 2008/95/EC 
(corresponding to Article 19(1) of Directive 2015/2436/EU) in connection with 
goods in respect of which the trade mark is registered. This in turn depends on the 
response to the questions referred. 
14 The trade mark has been used in the relevant period of use in order to identify 
replacement and accessory parts for the very high-priced luxury sports cars 
previously sold under the trade mark. In consideration of the fact that use does not 
always have to be extensive in order to be genuine, the Chamber does not share 
the opinion expressed by the Regional Court that the extent of use demonstrated 
by the defendant is not sufficient for genuine use, if it is considered that the trade 
mark has actually been used in respect of high-priced luxury vehicles which are 
typically only produced in small numbers. For example, the Bundespatentgericht 
(Federal Patent Court) found the delivery of even just a few such sports cars to be 
sufficient for genuine use [...]. It is, however, doubtful whether, when assessing 
the question of whether use is genuine in terms of nature and extent, account may 
be taken of these particular features, since the trade mark is registered not in 
respect of high-priced luxury sports cars, but generally in respect of motor cars 
and parts thereof. In this respect, the Court of Justice has ruled that, with a trade 
mark which in the case at issue was generally registered in respect of chocolate 
goods but was actually only used in respect of handmade pralines, account is to be 
taken of whether the use of the sign generally appears to be genuine in relation to 
chocolate goods (Court of Justice judgment of 17 July 2014, C-141/13 P [...] 
WALZERTRAUM, paragraph 43). However, if account is taken of whether the 
trade mark has been put to genuine use in the mass market for motor cars and 
parts thereof, genuine use would immediately have to be denied. In this case, there 
is no need to answer the further questions referred. 
15 In so far as genuine use in terms of extent then even comes into question, this 
raises the further question of which acts of the defendant [Or. 11] and its licensees 
are to be taken into account. In this regard, the defendant claims that it and its 
licensees sold used vehicles that were inspected thereby and were provided with 
the cancellation trade mark. The Regional Court did not regard this as (renewed) 
use of the cancellation trade mark by the defendant, because the concept of right-
maintaining use could not go further than that of right-infringing use. Acts of use 
which the defendant could not prohibit third parties from performing — in this 
case the sale of already exhausted goods — could therefore not constitute right-
maintaining use. The defendant counters this by stating that the sale of the used 
vehicles specifically thereby comprised a renewed commitment in respect of the 
vehicle, which meant that the sale of exhausted goods by the trade mark proprietor 
also constituted a renewed right-maintaining use of the trade mark. 
FERRARI 
 
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16 The defendant also claims that it provides extensive services in respect of the 
Testarossa vehicles, including in particular maintenance services, and offers 
replacement and accessory parts. In this case, according to the defendant’s 
submission, some of the replacement and accessory parts are in particular 
provided with the cancellation trade mark. In this regard, the defendant claims that 
such use also constituted right-maintaining use in respect of motor cars. In this 
regard, the Court of Justice has already ruled that use of the mark may also in 
certain circumstances be genuine for goods that were sold at one time but are no 
longer sold. That should in particular apply where the proprietor of the trade mark 
under which such goods were put on the market uses the same mark in respect of 
parts (Court of Justice judgment of 11 March 2003, C-40/01, [...] Ansul v Ajax, 
paragraph 41). In its Examination Guidelines, the European Intellectual Property 
Office (EUIPO) regards the application of these principles as an exceptional case, 
because account is essentially taken of use in respect of goods to which the 
registration does not relate (Examination Guidelines Part C, Section 6 No 2.8). In 
the present case, there is also the particular feature that the cancellation trade mark 
also claims protection in respect of parts of motor cars. The application of the 
Ansul v Ajax decision to this case would mean that the trade mark which has been 
used in respect of parts of motor cars and is also protected in respect thereof was 
at the same time also used in respect of the motor cars which have not been sold 
for more than 25 years in respect of which it is likewise registered. [Or. 12] 
17 The Regional Court assumed that use in respect of motor cars through the sale of 
parts or the provision of services comes into question, but this requires that these 
parts themselves are sold under the trade mark, that is to say the indication does 
not merely identify the intended use of the parts, but at least also identifies the 
commercial origin of the parts or services. This corresponds to the case-law of the 
Court of Justice in the Ansul v Ajax decision. Otherwise, in the view of the 
Chamber, there is already no use of the trade mark. Furthermore, it is however 
also to be examined whether the established use is genuine, which is to be 
examined on the basis of all the facts and circumstances relevant to establishing 
that the commercial exploitation of the trade mark is real (Court of Justice 
judgment of 17 July 2014, C-141/13 P, [...] WALZERTRAUM, paragraph 29). This 
raises the question of whether, under these overall circumstances, the use of the 
sign also includes the fact that the proprietor of the trade mark still holds 
replacement parts for the goods already sold and provides a comprehensive 
service offer, for example regarding maintenance and servicing, which is intended 
for the vehicles already sold, but is not itself carried out under the cancellation 
trade mark. 
18 In relation to the geographically relevant acts of use, Article 12(1) of Directive 
2008/95/EC stipulates that the use had to take place ‘in the Member State 
concerned’. In this regard, Article 5 of the German-Swiss Treaty of 13 April 1892 
on the reciprocal protection of patents, designs and trade marks stipulates that the 
use of the trade mark in Switzerland is also deemed to be use in Germany. On the 
other hand, the Court of Justice has ruled that Article 10(1) of the directive shows 
that the use of a trade mark in Switzerland is not capable of proving genuine use 
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of the trade mark in Germany (Court of Justice, judgment of 12 December 2013, 
C-445/12 P, [...] BASKAYA, paragraph 49 et seq.). In contrast, the case-law of the 
Bundesgerichtshof (Federal Court of Justice) assumes that the Agreement is in 
force and is to be applied and that neither the Treaties of Rome nor the 
implementation of the Trade Mark Directive had done anything to change this 
[...]. As reasoning, the Federal Court of Justice referred to Article 351 TFEU. This 
also appears convincing, since if, according thereto, in the case of a contractual 
obligation that contradicts primary EU law [Or. 13] there is merely an obligation 
of the Member State to rectify the incompatibility found, the subsequent 
enactment of secondary EU law cannot actually lead to the ineffectiveness of an 
international treaty, but can at most establish an obligation of the Member State to 
also resolve that contradiction. On the other hand, it would be unsatisfactory if the 
trade mark cannot be cancelled under national law, because the Federal Republic 
of Germany is bound to the treaty, but the trade mark nevertheless does not 
preclude the registration of a European Union trade mark. 
19 Finally, if, after the remaining questions have been answered, according to the 
defendant’s submission, right-maintaining use is to be assumed at least in respect 
of some of the goods, the question is raised as to which party bears the burden of 
proof. According to the German case-law, the general principles of the national 
civil procedure law are also to be applied in the case of cancellation action due to 
revocation. That means that the party bringing the action must prove the facts on 
which the claim is based. This applies even if these facts are negative facts, that is 
to say in this case the lack of right-maintaining use. The problem arising in this 
case that the precise circumstances of the use, in particular for example the sales 
achieved with the trade mark, are often beyond the knowledge of the applicant is 
taken into account by the German case-law in that the trade mark proprietor is 
obliged to explain in a substantiated and comprehensive manner how he has used 
the sign (secondary burden of explanation). If he fulfils that burden of 
explanation, it is for the applicant to disprove those explanations. The application 
of those principles to the present dispute would mean that a ruling could be given 
on the action without an evidentiary hearing, as although the defendant has 
sufficiently explained in a substantiated manner the acts which it considers to be 
relevant acts of use and has also offered proof, the applicant confines himself in 
this respect to contesting the defendant’s submission without having offered any 
proof of his own. In this respect, he would have to be regarded as being unable to 
provide proof. However, if the burden of proof were to lie with the defendant as 
proprietor of the trade mark, the proof offered thereby would have to be 
examined. [Or. 14] 
20 In respect of the proceedings for cancellation of a European Union trade mark due 
to non-use, the Court of Justice has ruled that, in that case, the burden of proof lay 
with the trade mark proprietor (Court of Justice judgment of 26 September 2013, 
C-610/11 P, [...] CENTROTHERM II, paragraph 61 et seq.). In this respect, 
however, the view is expressed that the question of the burden of proof was not 
regulated in the directive, but the configuration of the cancellation proceedings 
was subject to national procedural law [...]. However, this is not without its 
FERRARI 
 
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problems. In relation to the question of who bears the burden of proof in respect of 
the distinctiveness in consequence of use of an abstract colour mark in 
cancellation proceedings, the Court of Justice has ruled that this question did not 
constitute a procedural provision of the Member States, but was conclusively and 
uniformly regulated in the directive (Court of Justice, judgment of 19 June 2017, 
C-217/13, [...] SPARKASSEN ROT, paragraph 66 et seq.). This suggests the 
assumption that the burden of proof in the cancellation action is also conclusively 
regulated in the directive. 
[...]