62023TJ1103
JUDGMENT OF THE GENERAL COURT (Eighth Chamber, Extended Composition)
2 July 2025 (
*1
)
(EU trade mark – Revocation proceedings – International registration designating the European Union – Word mark TESTAROSSA – Genuine use of the mark – Article 51(1)(a) of Regulation (EC) No 207/2009 (now Article 58(1)(a) of Regulation (EU) 2017/1001) – Use by third parties – Nature of the use – Implied consent of the proprietor of the mark – Proof of genuine use – Second-hand cars – Parts and accessories)
In Case T‑1103/23,
Ferrari SpA, established in Modena (Italy), represented by K. Muraro, G. Russo and C. Comolli Acquaviva, lawyers,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by E. Markakis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Kurt Hesse, residing in Nuremberg (Germany), represented by M. Krogmann, lawyer,
THE GENERAL COURT (Eighth Chamber, Extended Composition),
composed of A. Kornezov (Rapporteur), President, G. De Baere, D. Petrlík, K. Kecsmár and S. Kingston, Judges,
Registrar: G. Mitrev, Administrator,
having regard to the written part of the procedure,
further to the hearing on 12 December 2024,
gives the following
Judgment
1
By its action under Article 263 TFEU, the applicant, Ferrari SpA, seeks the annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2023 (Joined Cases R 334/2017-5 and R 343/2017-5), as corrected on 28 September 2023 (‘the contested decision’).
Background to the dispute
2
By an international registration dated 17 October 2006, designating the European Union and received by EUIPO on 8 February 2007, Ferrari SpA requested the protection in the European Union of the word mark TESTAROSSA.
3
The goods covered by the international registration fell, inter alia, within Class 12 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and corresponded to the following description: ‘Vehicles; apparatus for locomotion by land, air or water; land motor vehicles, automobiles, structural and replacement parts, components and accessories therefor all included in this class; brakes, engines, tyres for land motor vehicles included in this class; bicycles, motor bicycles, vans and trucks’.
4
The international registration was published in the Community Trade Marks Bulletin on 8 February 2007 and the trade mark was entered in the Register of Community trade marks on 12 December 2007.
5
On 7 September 2015, the intervener, Mr Kurt Hesse, made an application for invalidation of the effects of the international registration in respect of the goods referred to in paragraph 3 above, pursuant to Article 158(2) of Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (now Article 198(2) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)), read in conjunction with Article 51(1)(a) of Regulation No 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).
6
By decision of 16 December 2016, the Cancellation Division partially granted that application and revoked the contested mark as regards ‘vehicles; apparatus for locomotion by land, air or water; land motor vehicles; structural and replacement parts, components and accessories therefor all included in this class; brakes, engines, tyres for land motor vehicles included in this class; bicycles, motor bicycles, vans and trucks’, with effect from 16 December 2016. However, it rejected the application for a declaration of invalidity as regards ‘automobiles’.
7
On 13 February 2017, the intervener filed a notice of appeal against the Cancellation Division’s decision, seeking to have it partially annulled, in so far as the Cancellation Division had rejected the application to revoke the contested mark with respect to ‘automobiles’.
8
On 14 February 2017, the applicant also filed a notice of appeal against the Cancellation Division’s decision, seeking to have it partially annulled, in so far as the Cancellation Division had revoked the contested mark with respect to ‘structural and replacement parts, components and accessories [for vehicles] all included in this class; engines’ (‘parts and accessories’).
9
By the contested decision, the Board of Appeal upheld the intervener’s appeal and dismissed the applicant’s appeal. The applicant’s rights in the contested mark were thus revoked for all the goods referred to in paragraph 3 above.
Forms of order sought
10
The applicant claims that the Court should:
–
annul the contested decision;
–
alter the contested decision, in so far as genuine use of the contested mark has been shown for ‘automobiles’ and parts and accessories in Class 12;
–
order EUIPO and the intervener to pay the costs incurred in the proceedings before the Board of Appeal and in the present proceedings.
11
At the hearing, the applicant withdrew the second head of the form of order sought, of which the Court took formal note in the minutes of the hearing.
12
EUIPO contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs if a hearing is convened.
13
The intervener contends that the Court should:
–
dismiss the action;
–
order the applicant to pay the costs.
Law
Determination of the substantive and procedural law applicable ratione temporis
14
In view of the date of submission of the application for revocation at issue, that is to say 7 September 2015, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 207/2009 and of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, C‑223/18 P, not published, EU:C:2019:471, paragraph 2, and of 3 July 2019, Viridis Pharmaceutical v EUIPO, C‑668/17 P, EU:C:2019:557, paragraph 3).
15
In that regard, it is apparent from Article 55(1) of Regulation No 207/2009 that any declaration of revocation takes effect retroactively as from the date of the application for revocation. Furthermore, in so far as, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012_Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the dispute is governed by the procedural provisions of Regulation 2017/1001. It should be noted, however, that, as regards proof of genuine use of the contested mark, pursuant, in particular, to Article 82(2)(d), (f) and (i) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1), the dispute is governed by the provisions of Regulation No 2868/95 (judgment of 24 March 2021, Novomatic v EUIPO – adp Gauselmann (Power Stars), T‑588/19, not published, EU:T:2021:157, paragraph 20).
16
Consequently, in the present case, so far as concerns the substantive rules, the references to the provisions of Regulation 2017/1001 made by the Board of Appeal in the contested decision and by the parties in their written pleadings must be understood as referring to the substantively identical provisions of Regulation No 207/2009.
Substance
17
The applicant puts forward four pleas alleging, in essence, first, failure to state reasons, in that not all of the relevant factors were taken into account in assessing genuine use of the contested mark, secondly, infringement of Article 51(1)(a) of Regulation No 207/2009, thirdly, infringement of Article 15(2) of that regulation (now Article 18(2) of Regulation 2017/1001), and fourthly, errors of assessment with regard to the use of the contested mark for parts and accessories.
18
Article 51(1)(a) of Regulation No 207/2009 provides that the rights of the proprietor of an EU trade mark are to be declared to be revoked on application to EUIPO if, within a continuous period of five years – running, in the present case, from 7 September 2010 to 6 September 2015 inclusive (‘the relevant period’) – the trade mark has not been put to genuine use in the European Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
19
Under Rule 22(3) of Regulation No 2868/95 – which applies mutatis mutandis in invalidity proceedings pursuant to Rule 40(5) of that regulation – the proof of use must relate to the place, time, extent and nature of use of the earlier mark. Under Rule 22(4), the evidence must, in principle, be confined to the submission of supporting documents and items such as packages, labels, price lists, catalogues, invoices, photographs, newspaper advertisements and statements in writing as referred to in Article 78(1)(f) of Regulation No 207/2009.
20
Thus, there is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods and services for which it is registered, in order to create or preserve an outlet for those goods and services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, judgment of 11 March 2003, Ansul, C‑40/01, EU:C:2003:145, paragraph 43). Furthermore, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (see judgments of 18 March 2015, Naazneen Investments v OHIM – Energy Brands (SMART WATER), T‑250/13, not published, EU:T:2015:160, paragraph 25 and the case-law cited, and of 11 January 2023, Hecht Pharma v EUIPO – Gufic BioSciences (Gufic), T‑346/21, EU:T:2023:2, paragraph 22 (not published) and the case-law cited).
21
In addition, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (see judgment of 23 September 2009, Cohausz v OHIM – Izquierdo Faces (acopat), T‑409/07, not published, EU:T:2009:354, paragraph 36 and the case-law cited).
22
It is apparent from settled case-law that when assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (see judgment of 18 March 2015, SMART WATER, T‑250/13, not published, EU:T:2015:160, paragraph 26 and the case-law cited).
23
The arguments by which the applicant seeks, in essence, to challenge the Board of Appeal’s findings that there had not been genuine use of the contested mark, in relation either to ‘automobiles’ in Class 12, or to parts and accessories in that class, must be examined in the light of those principles. It is therefore appropriate to begin by examining the second and third pleas together, followed by the fourth plea and, lastly and in so far as may be necessary, the first plea.
The second and third pleas in law, concerning proof of genuine use of the contested mark for automobiles
24
In the contested decision, the Board of Appeal noted, first of all, that the applicant had not produced or distributed, during the relevant period, any new cars under the contested mark, and had not itself sold any second-hand cars under the TESTAROSSA mark. Next, with regard to the sale by third parties of second-hand cars bearing the TESTAROSSA mark, the Board of Appeal held, in essence, that in order to prove genuine use of that mark, the proprietor had to show that such sales had been made with its consent. In its view, there is no automatism that any second-hand sale of which the trade mark proprietor is aware may be considered genuine use of the mark with its consent, since the consent of the trade mark proprietor is not required for the resale of such second-hand goods. In that regard, the Board of Appeal held that the applicant had not shown that it had consented to the sale of second-hand cars bearing the TESTAROSSA mark by third parties, within the meaning of Article 15 of Regulation No 207/2009. Lastly, it noted that the fact that the applicant provides a service consisting in certifying that a given second-hand car is a genuine Testarossa (‘the certification service’) was irrelevant, in so far as that service was provided under the Ferrari mark and not under the contested mark, and thus did not prove genuine use of the latter.
25
The applicant challenges those findings, submitting, first, that the sales of second-hand cars bearing the TESTAROSSA mark made by authorised dealers, in respect of which it produces supporting invoices, took place with its consent. It submits that the fact that those dealers provided it with invoices evidencing the sale of second-hand cars bearing the TESTAROSSA mark impliedly confirms that they used the contested mark with its consent. Secondly, the applicant submits that it provides dealers with the certification service in return for remuneration. Thus, it argues, that service generates revenue for it and is directly linked to the sales of second-hand cars bearing the TESTAROSSA mark made by authorised dealers, in that the certificates issued under that arrangement increase the value of the cars and facilitate their resale.
26
EUIPO and the intervener submit, first, that the applicant’s consent cannot be presumed simply on the basis that it did not object to the use of the contested mark by third parties. The absence of a licence relating expressly to the contested mark, or any other form of consent on the part of the applicant to its use by third parties, demonstrates its passivity. Secondly, according to EUIPO, the applicant has not shown that it undertook any active behaviour on the market for second-hand cars that would enable it to retain the possibility of control over the quality of the goods at issue. The intervener adds that the Board of Appeal was right to hold that the certification service was not relevant, in so far as it is provided under the Ferrari mark.
27
As a preliminary remark, it should be observed that, as has been stated in paragraph 19 above, the evidence of use must relate to the place, time, extent and nature of the use of the earlier mark. In the present case, as EUIPO acknowledged at the hearing, the Board of Appeal confined itself, in the contested decision, to assessing the nature of the use of the contested mark. In those circumstances, that is the only factor which is subject to review by the General Court in the present case.
28
It should also be stated that it is common ground between the parties that Testarossa model cars were built between the years 1984 and 1996 and that, consequently, no new cars were produced or placed on the market under the contested mark during the relevant period.
29
Similarly, it is common ground, as the applicant and EUIPO confirmed at the hearing, that, during the relevant period, second-hand cars bearing the TESTAROSSA mark were marketed not by the applicant itself, but by third parties, namely, in particular, dealers or distributors which were authorised by the applicant and established in Italy, Germany, Belgium, France and Spain.
30
According to the case-law, the resale, as such, of a second-hand product bearing a trade mark does not mean that that mark is being put to ‘use’ within the meaning of Article 51(1)(a) of Regulation No 207/2009. That mark was used when it was affixed by its proprietor to the new product when that product was first put on the market. However, if the proprietor of the trade mark 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’ of that mark within the meaning of Article 51(1)(a) of Regulation No 207/2009 (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraphs 55 and 56).
31
Article 13(1) of Regulation No 207/2009, which concerns the exhaustion of the rights conferred by a trade mark, confirms that interpretation. According to that provision, a trade mark does not entitle the proprietor to prohibit its use in relation to goods which have already been put on the market in the European Union under that trade mark by the proprietor or with its consent. It follows that a trade mark is capable of being put to use in respect of goods already put on the market under that trade mark. The fact that the proprietor of the trade mark cannot prohibit third parties from using its trade mark in respect of goods already put on the market under that mark does not mean that it cannot use it itself in respect of such goods (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraphs 58 and 59).
32
In addition, under Article 15(2) of Regulation No 207/2009, use of the trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Therefore, as the Board of Appeal correctly pointed out in paragraph 76 of the contested decision, the conclusion set out in paragraph 31 above also applies to use of the mark by third parties with the consent of the proprietor, which, moreover, the parties do not dispute. Consequently, it remains open to the proprietor of the trade mark to show that it has been put to genuine use in respect of second-hand goods sold under that mark by third parties with its consent.
33
Furthermore, it is for the proprietor of the trade mark to furnish proof that it consented to the use of that mark by a third party (see, to that effect, judgment of 11 May 2006, Sunrider v OHIM, C‑416/04 P, EU:C:2006:310, paragraph 44).
34
In the present case, it is common ground that the applicant has not produced any evidence, such as a licence, showing its express consent to the use of the contested mark by third parties during the relevant period. On the other hand, the applicant maintains that the evidence it has produced is capable of demonstrating that such use was made with its implied consent.
35
In that respect, according to the case-law, the consent of the trade mark proprietor may be express or implied. The proprietor’s consent must be so expressed that an intention to renounce its exclusive rights in the mark is unequivocally demonstrated. Such intention will normally be gathered from an express statement of consent. However, it is conceivable that, in certain cases, it may be inferred from facts and circumstances prior to, simultaneous with or subsequent to the use of the mark at issue by a third party, which also unequivocally demonstrate that the proprietor has renounced its right (see judgments of 13 January 2011, Park v OHIM – Bae (PINE TREE), T‑28/09, not published, EU:T:2011:7, paragraph 61 and the case-law cited, and of 8 June 2022, Muschaweck v EUIPO – Conze (UM), T‑293/21, EU:T:2022:345, paragraph 71 (not published) and the case-law cited).
36
It is therefore necessary to examine whether such implied consent of the proprietor can be inferred from facts and circumstances prior to, simultaneous with or subsequent to the use of the contested mark by a third party.
37
In that regard, according to the case-law, where the proprietor of a trade mark which is the subject of revocation proceedings maintains that the use of that mark by a third party constitutes genuine use within the meaning of Article 15(1) of Regulation No 207/2009, it claims, by implication, that it consented to that use (judgment of 8 July 2004, Sunrider v OHIM – Espadafor Caba (VITAFRUIT), T‑203/02, EU:T:2004:225, paragraph 24).
38
It must however be stated that, as EUIPO has observed, in the specific context of the use of a trade mark in respect of second-hand goods, such implied consent cannot be inferred from the mere fact that the proprietor was aware of the use of the mark by a third party and did not oppose it. The consent of the proprietor is not legally required in order for a third party to use the mark in respect of second-hand goods. However, in order for implied consent to be established in that specific context, the proprietor must also have been involved in the use of the mark by third parties.
39
The relevant facts and circumstances potentially reflecting such implied consent must be examined, as EUIPO stated at the hearing, in the light, in particular, of the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods protected by the mark and of the characteristics of the market (see, to that effect and by analogy, judgment of 18 March 2015, SMART WATER, T‑250/13, not published, EU:T:2015:160, paragraph 26 and the case-law cited).
40
In the present case, in the first place, the applicant has produced invoices relating to the sale of second-hand cars bearing the TESTAROSSA mark, issued by dealers authorised by the applicant and containing the following wording: ‘Ferrari Vertragshändler’ (authorised Ferrari dealer), ‘Ferrari und Ferrari Classiche Vetragspartner’ (contractual partner of Ferrari and Ferrari Classiche), ‘Offizieller Ferrari und Maserati Vetragshändler’ (official authorised dealer, Ferrari and Maserati) or ‘distributeur-réparateur agréé’ (authorised distributor and repair centre).
41
It follows that the use of the contested mark relied on by the applicant is not use by some unrelated third party, but use by authorised dealers and distributors with which the applicant has economic and contractual links, which is not disputed in the present case.
42
In that regard, the General Court has had occasion to hold that the use of the mark of a production company by a distribution company which is economically linked can be regarded as use of that mark with the consent of the proprietor and thus as constituting use by the proprietor, in accordance with Article 15(2) of Regulation No 207/2009 (see, to that effect, judgments of 17 February 2011, J & F Participações v OHIM – Plusfood Wrexham (Friboi), T‑324/09, not published, EU:T:2011:47, paragraph 32; of 5 March 2019, Meblo Trade v EUIPO – Meblo Int (MEBLO), T‑263/18, not published, EU:T:2019:134, paragraph 80 and the case-law cited; and of 16 October 2024, Fractal Analytics v EUIPO – Fractalia Remote Systems (FRACTALIA), T‑194/23, not published, EU:T:2024:696, paragraph 102 and the case-law cited).
43
Those considerations apply mutatis mutandis where a trade mark of a production company, such as the contested mark, is used by a distribution company authorised by the proprietor of that mark, in so far as such authorisation establishes a link between those two companies which, in the absence of any indication to the contrary, presupposes that the proprietor of the trade mark has authorised that approved dealer or distributor, albeit impliedly, to use its trade marks in the course of its economic activities on the market.
44
That assessment is supported, in the present case, by the practices regarded as warranted in the relevant economic sector and the characteristics of the market. It is common practice in the motor vehicle market for cars to be marketed both under a trade mark designating their manufacturer, such as, in the present case, the word mark Ferrari or the applicant’s figurative mark representing a prancing horse, and under a second trade mark designating their model, such as the contested mark, the two marks being intrinsically linked. Thus, according to the practices regarded as warranted in that sector, a distributor or dealer authorised by Ferrari is deemed to be authorised to market all of that manufacturer’s car models. In addition, in accordance with the practices regarded as warranted in the second-hand car sector, a distinction must be drawn between sales of second-hand cars by an independent third party having no connection with the manufacturer of those cars, and sales by a dealer or distributor authorised by that manufacturer. That is all the more true when, as in the present case, the second-hand cars in question are vintage collectible luxury high-end models, which are particularly esteemed and valued by collectors. It is well known that, on this specific market, the fact that such a car is sold by a dealer or distributor authorised by the proprietor of the trade mark can serve to indicate its commercial origin and to reassure customers that the maintenance of the car and any replacement of parts and accessories have not been carried out in such a way as to affect its commercial origin.
45
Accordingly, contrary to the view taken by the Board of Appeal, it must be held that the fact that a second-hand car bearing the TESTAROSSA mark is sold by a dealer or distributor authorised by the proprietor of the contested mark constitutes an indication that the sale is conducted with the consent, albeit implied, of the proprietor.
46
In the second place, the applicant has also produced invoices, issued by the applicant itself, addressed to customers in Italy, Switzerland, the Netherlands and the United Kingdom in the context of the certification service referred to in paragraphs 24 and 25 above.
47
According to the case-law, the actual use, by its proprietor, of a trade mark registered in respect of certain goods, for services which are directly connected with the goods previously sold and intended to meet the needs of customers of those goods, is capable of constituting ‘genuine use’ of that mark, within the meaning of Article 51(1)(a) of Regulation No 207/2009 (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 62).
48
However, such use presupposes actual use of the trade mark concerned when the services in question are provided. In the absence of use of that mark, there can obviously be no question of ‘genuine use’ of that mark within the meaning of Article 51(1)(a) of Regulation No 207/2009 (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 63).
49
In the present case, it is apparent from the file, and, in particular, from the content of the invoices, that the purpose of the certification service is to certify the authenticity of second-hand cars bearing the TESTAROSSA mark (‘certificazione autenticita vettura Testarossa’ in Italian). As the applicant explained at the hearing, such a ‘certificate of authenticity’, which it provides in particular to its authorised dealers in connection with the sale of second-hand cars bearing the TESTAROSSA mark, establishes, in return for payment and after the necessary checks, that the car in question is an original Testarossa model.
50
The applicant has also produced a document entitled ‘Technical sheet’, which is an example of an application for certification of a second-hand car bearing the TESTAROSSA mark. It is apparent from that document that, in order to obtain a certificate of authenticity, the person applying must provide precise information on the origin of each of the car’s main parts, such as the engine, gearbox, fuel tank and fuel pump, as well as the history of any replacements, all supported by photographs of the car and its parts.
51
The appellant further explained, in its response to a written question from the General Court and at the hearing, that such certificates played an important role in the sale of second-hand cars bearing the TESTAROSSA mark, in that they reassure purchasers as to the commercial origin of the car and increase its value, in comparison with a second-hand car without such a certificate.
52
It follows that the certification service relates directly to sales of second-hand cars bearing the TESTAROSSA mark by authorised dealers and is intended to meet the needs of purchasers of such cars, with the consequence that such use is capable, in accordance with the case-law referred to in paragraph 47 above, of constituting ‘genuine use’ of that mark, within the meaning of Article 51(1)(a) of Regulation No 207/2009.
53
As regards the fact, noted by the Board of Appeal, that that certification is provided not under the contested mark, but under the Ferrari mark, it is sufficient to note that the contested mark is also clearly visible and identifiable in the actual heading of those invoices.
54
It is apparent from settled case-law that there is no precept in the EU trade mark system that obliges its proprietor to prove the use of its earlier mark on its own, independently of any other mark or any other sign. Therefore, the case could arise where two or more trade marks are used jointly and autonomously, with or without the name of the manufacturer’s company. Thus, the joint use of another mark with the contested mark cannot, in itself, undermine the function of that other mark as a means of identifying the goods concerned (see judgment of 8 June 2022, Apple v EUIPO – Swatch (THINK DIFFERENT), T‑26/21 to T‑28/21, not published, EU:T:2022:350, paragraph 87 and the case-law cited). Furthermore, the condition of genuine use of a trade mark may only be satisfied where a trade mark is used in conjunction with another mark, provided that the mark continues to be perceived as indicative of the origin of the product concerned (see judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle), T‑796/16, EU:T:2020:439, paragraph 142 and the case-law cited).
55
In the present case, as has been pointed out in paragraph 44 above, it is well known that cars are commonly marketed under a trade mark designating their manufacturer and at the same time under a second mark, designating their model, with the result that the simultaneous use of the Ferrari mark and the contested mark, which designates a specific Ferrari model, on the invoices relating to the certification service, is consistent with normal practice on the market in question.
56
The Board of Appeal was therefore wrong to dismiss as irrelevant the evidence relating to the certification of second-hand cars bearing the TESTAROSSA mark.
57
That conclusion is not called into question by EUIPO’s argument that the applicant remained passive during the relevant period, since it follows from the foregoing considerations, and in particular those relating to the certification service, that the applicant was involved in certain sales of second-hand cars bearing the TESTAROSSA mark which were made by its authorised dealers and distributors, and derived an economic benefit from the revenue it generated through that service.
58
Furthermore, in so far as the applicant relies on the reputation of the contested mark in the European Union during the relevant period, it must be borne in mind that the requirement for the proprietor of the contested mark to prove use cannot be satisfied or diminished on the ground that that mark had a reputation within the European Union during the relevant period (judgment of 8 April 2016, Frinsa del Noroeste v EUIPO – Frisa Frigorífico Rio Doce (FRISA), T‑638/14, not published, EU:T:2016:199, paragraph 35), and that evidence must therefore be adduced irrespective of reputation.
59
However, it is nonetheless conceivable that, depending on the circumstances, as in the present case, the reputation of the contested mark may constitute one factor among others that casts light on the practices regarded as warranted in the economic sector concerned as a means of maintaining or creating market shares for the goods protected by the mark, within the meaning of the case-law cited in paragraph 22 above. In particular, as has been pointed out in paragraph 44 above, the fact that an especially sought-after car is sold by a dealer or distributor authorised by the proprietor of the trade mark can serve to reassure customers that the maintenance of the car and any replacement of parts and accessories have not been carried out in such a way as to affect its commercial origin.
60
Having regard to all the foregoing considerations, it must be held that the Board of Appeal made an error of assessment in concluding that the applicant had not shown that it had impliedly consented to the use of the contested mark by third parties in respect of ‘automobiles’ in Class 12.
61
Accordingly, the second and third pleas must be upheld.
The fourth plea in law, concerning proof of genuine use of the contested mark for parts and accessories
62
In the contested decision, the Board of Appeal rejected as inadmissible, in the appeal brought by the applicant, the evidence relating to the use of the contested mark for parts and accessories falling within Class 12, produced by the applicant for the first time before the Board of Appeal, before rejecting that evidence on substantive grounds. By contrast, in the appeal brought by the intervener, the Board of Appeal examined that same evidence substantively, without ruling on its admissibility. On completion of that examination, the Board of Appeal held that the evidence was insufficient to demonstrate genuine use of the contested mark for parts and accessories.
63
It is necessary to examine the reasoning of the contested decision in relation to the admissibility of the evidence produced for the first time before the Board of Appeal, and then the applicant’s substantive arguments.
– The reasoning of the contested decision
64
According to settled case-law, an absence of or inadequate statement of reasons constitutes an infringement of essential procedural requirements for the purposes of Article 263 TFEU and is a plea involving a matter of public policy which may, and even must, be raised by the EU judicature of its own motion (judgments of 2 December 2009, Commission v Ireland and Others, C‑89/08 P, EU:C:2009:742, paragraph 34, and of 9 March 2023, Les Mousquetaires and ITM Entreprises v Commission, C‑682/20 P, EU:C:2023:170, paragraph 39). In that regard, it is important to add that the rule that the parties should be heard forms part of the rights of the defence, and that it applies to any procedure which may result in a decision by an EU institution perceptibly affecting a person’s interests (judgment of 2 December 2009, Commission v Ireland and Others, C‑89/08 P, EU:C:2009:742, paragraph 50). Accordingly, the court must itself observe the rule that the parties should be heard, in particular, when it decides a dispute on a ground it has identified of its own motion (judgment of 2 December 2009, Commission v Ireland and Others, C‑89/08 P, EU:C:2009:742, paragraph 54).
65
In that regard, it should be observed that, under Article 76(2) of Regulation No 207/2009, EUIPO may disregard facts or evidence which are not submitted in due time by the parties concerned.
66
It follows from the wording of Article 76(2) of Regulation No 207/2009 that, as a general rule and unless otherwise specified, the submission of facts and evidence by the parties remains possible after the expiry of the time limits to which such submission is subject under the provisions of Regulation No 207/2009, and that EUIPO is in no way prohibited from taking account of facts and evidence which are submitted or produced late (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 42, and of 24 January 2018, EUIPO v European Food, C‑634/16 P, EU:C:2018:30, paragraph 55).
67
In stating that EUIPO ‘may’, in such a case, decide to disregard such evidence, Article 76(2) of Regulation No 207/2009 grants it a broad discretion to decide, while giving reasons for its decision in that regard, whether or not to take such evidence into account (judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 43, and of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:T:2018:128, paragraph 49).
68
As regards the exercise of that discretion, it should be observed that, according to the case-law, taking such evidence into account is particularly likely to be justified where EUIPO considers, first, that the material which has been produced late is, on the face of it, likely to be relevant and, secondly, that the stage of the proceedings at which that late submission takes place and the circumstances surrounding it do not argue against that material being taken into account (see, to that effect, judgments of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 44; of 28 February 2018, mobile.de v EUIPO, C‑418/16 P, EU:T:2018:128, paragraph 63; and of 4 October 2018, Blackmore v EUIPO – Paice (DEEP PURPLE), T‑344/16, not published, EU:T:2018:648, paragraph 54).
69
In the present case, first, as has been observed in paragraph 62 above, in the course of its examination of the applicant’s appeal, the Board of Appeal concluded that the evidence which had been produced by the applicant for the first time before it, in relation to parts and accessories, was inadmissible on the ground that it had been submitted out of time. In that regard, in paragraphs 168 and 169 of the contested decision, it merely stated that the evidence produced before the Cancellation Division was ‘unsatisfactory’ and that, ‘in view of the poor evidence discretion [could] not be exercised in favour of the [applicant]’.
70
That statement of reasons does not make it possible to be satisfied that the Board of Appeal examined the admissibility of that evidence in the light of the criteria established in the case-law and referred to in paragraph 68 above. In particular, it does not make it possible to ascertain whether the Board of Appeal considered whether that evidence was, on the face of it, likely to be relevant to the outcome of the appeal before it or whether the stage of the proceedings at which the late submission had taken place and the circumstances surrounding it argued against the material being taken into account. In that regard, the bald statement that the evidence produced before the Cancellation Division was ‘unsatisfactory’ does not constitute an adequate statement of reasons, because it does not provide any basis for understanding why the criteria established in the case-law, allowing the Boards of Appeal to admit late evidence, were not met in the present case.
71
When questioned at the hearing as to whether the contested decision was vitiated by an inadequate statement of reasons as to the admissibility of the evidence produced for the first time before the Board of Appeal, EUIPO stated, in essence, that an analysis of those criteria was not necessary in so far as that evidence had, in any event, been substantively examined later in the contested decision.
72
However, the fact that that evidence was in any event substantively examined does not remedy the inadequacy of the statement of reasons given in the contested decision for holding it to be inadmissible – rather, it relates to the consequences of that inadequacy as regards the legality of the contested decision, which will be examined below.
73
In those circumstances, it must be held that the contested decision is vitiated by an inadequate statement of reasons, which the General Court must raise of its own motion.
74
Secondly, and as has been pointed out in paragraph 62 above, it must be stated that, on the one hand, in the appeal brought by the applicant, the Board of Appeal rejected that evidence as inadmissible, whereas, on the other, in the appeal brought by the intervener, it did not raise the supposed inadmissibility of that same evidence, but proceeded to examine it directly and substantively.
75
In a written question, the General Court invited the parties to comment on whether the grounds of the contested decision were inconsistent in that regard, in case the General Court considered it appropriate to raise that issue of its own motion. In response to that question, the applicant submitted that the contested decision was vitiated by contradictory reasoning on that point, and that it should accordingly be annulled. For its part, EUIPO stated that the approach of the Board of Appeal was not contradictory, since, in any event, the evidence at issue had been examined and rejected on substantive grounds in both appeals, and thus the contradictory reasoning in question would not affect the legality of the contested decision. The intervener put forward a similar argument.
76
In that regard, it must be held that the contested decision is vitiated by contradictory reasoning which the General Court is obliged to raise of its own motion, in so far as the same evidence was rejected, primarily, as inadmissible in the appeal brought by the applicant, but considered, implicitly but necessarily, to be admissible in the appeal brought by the intervener.
77
As regards EUIPO’s argument reproduced in paragraph 75 above, it must be stated, echoing paragraph 72 above, that it has no bearing on the fact that the contested decision is vitiated by contradictory reasoning as regards the admissibility of the evidence produced for the first time before the Board of Appeal, but relates to the consequences of the contradictory reasoning as regards the legality of the contested decision, which will be examined below.
78
In the light of the foregoing, the General Court is not in a position to determine whether the Board of Appeal was able, without committing any error, to disregard the evidence at issue as inadmissible. As stated in paragraphs 72 and 76 above, the contested decision is vitiated, first, by an inadequate statement of reasons and, secondly, by contradictory reasoning.
79
In those circumstances, it is necessary to examine EUIPO’s argument that the defects in the statement of reasons identified above have no bearing on the legality of the contested decision, in so far as the Board of Appeal rejected that evidence on substantive grounds in any event.
– Substance
80
In the contested decision, first, the Board of Appeal held that the contested mark had been used for parts and accessories not by the applicant but by independent traders, and that it was not apparent from the evidence that such use had been made with the applicant’s consent. Secondly, it stated that the contested mark had been used, in relation to those goods, for ‘descriptive’ purposes and not to indicate the commercial origin of those goods. According to the Board of Appeal, the evidence submitted by the applicant did not distinguish between parts and accessories sold under the contested mark and generic parts and accessories compatible with Testarossa model cars. Thirdly, as regards the evidence showing parts and accessories bearing the contested mark, the Board of Appeal stated that these were isolated cases which were not sufficient to demonstrate genuine use of the contested mark for such parts and accessories.
81
The applicant submits, first, that the Board of Appeal was wrong in refusing to find that there had been genuine use of the contested mark for parts and accessories. In that respect, it argues that the Board of Appeal was wrong in asserting that the third parties involved in the sale of those parts and accessories were ‘independent traders’ and that the use of the contested mark for such goods could not be regarded as demonstrating genuine use for automobiles ‘because of the disproportion in value’. It also states that, in its examination, the Board of Appeal did not take into consideration the criteria relevant to the assessment of genuine use, namely the nature of the goods in question, the characteristics of the market and the frequency of use. Furthermore, it submits, the Board of Appeal erred in its interpretation of the concept of ‘genuine use’ and in its assessment of such use through the acts of third parties, wrongly holding that the evidence which had been produced was insufficient to show that the essential function of the trade mark had been fulfilled.
82
The applicant submits, secondly, that the Board of Appeal failed to have regard to the case-law under which the use of a registered mark for parts which are integral to the goods covered by that mark is capable of constituting genuine use not only for the parts themselves, but also for the goods covered by the mark.
83
EUIPO and the intervener dispute the applicant’s arguments and submit that genuine use of the contested mark for parts and accessories has not been proved and could not, in any event, establish use for ‘automobiles’. They submit that the judgment of 22 October 2020, Ferrari (C‑720/18 and C‑721/18, EU:C:2020:854), does not establish that use for parts automatically constitutes genuine use for automobiles. The intervener emphasises that parts and accessories are secondary products, generally sold by independent resellers who use the mark for ‘descriptive’ purposes, without establishing a direct link with the proprietor of the mark. It also submits that the applicant has not produced any licence agreements relating to the use of the contested mark for parts and accessories.
84
In the present case, the applicant does not contest the finding of the Board of Appeal that the parts and accessories marketed under the contested mark during the relevant period were ‘mainly’ second hand.
85
It is, moreover, common ground between the parties that the use of the contested mark for parts and accessories relied on by the applicant was not use by the applicant itself but use by third parties.
86
In that respect, the applicant does not claim to have expressly consented to such use. It argues however that the evidence it submitted to EUIPO is capable, taken as a whole, of demonstrating that it impliedly consented to such use.
87
At the hearing, the applicant also submitted that one of its dealers, Maranello, which sold parts and accessories under the contested mark during the relevant period, actually belonged to the same group of companies as the applicant itself. However, since that is not apparent from the file and the submission has not been supported by any evidence, the General Court cannot take it into consideration.
88
First, it must be stated that, as the applicant has submitted and contrary to the conclusion reached by the Board of Appeal, the use of the contested mark for parts and accessories that occurred during the relevant period was, as is apparent from the evidence produced by the applicant, not use by independent traders having no relationship with the applicant, but use by authorised dealers and distributors, with which the applicant had economic and contractual links.
89
The evidence produced by the applicant includes several screenshots and extracts from the Maranello website, from which it is apparent that that company ‘holds the exclusive global distribution rights for all factory-made parts for any pre-1995 Ferrari cars’ and that it sells ‘Ferrari’ parts and accessories, described as ‘genuine parts’, which comply with approved standards and have been tested for quality, safety and reliability. The applicant also produced invoices issued by Maranello and other authorised dealers, showing the sale of such parts and accessories to private individuals in Germany, Switzerland and the Czech Republic, or repair services for cars bearing the TESTAROSSA mark.
90
In addition, as stated in paragraphs 49 and 50 above, the applicant offers, in particular to authorised dealers and distributers, the certification service, which is provided in order to certify the authenticity of second-hand cars bearing the TESTAROSSA mark and includes verification of the commercial origin of the main parts of the car.
91
Therefore, for reasons similar to those set out in paragraphs 34 to 56 above, it must be held that the applicant has demonstrated that it impliedly consented to the use, by third parties, of the contested mark for spare parts and accessories.
92
Secondly, the Board of Appeal held that the evidence produced by the applicant showed ‘descriptive’ use of the contested mark for parts and accessories, with the sole purpose of indicating that those products were compatible with a car bearing the TESTAROSSA mark.
93
In that regard, it must be held that the Board of Appeal did not take sufficient account of the fact that the sales of parts and accessories effected by authorised dealers, in particular by Maranello, related, inter alia, to ‘genuine [Testarossa] parts’, as the applicant had submitted before the Board of Appeal and before the Cancellation Division, and as is apparent from paragraph 89 above. In that regard, it must also be observed that certain items of evidence, such as the invoices issued by Maranello, contain numerous references to parts and accessories designated specifically by the contested mark.
94
In any event, the Board of Appeal itself acknowledged, in paragraph 197 of the contested decision, that certain parts and accessories bore the contested mark, while holding that these were ‘isolated cases’. However, the question whether or not they are ‘isolated cases’ relates to the extent of use of the mark for such parts and accessories rather than the nature of that use – and, as has been pointed out in paragraph 27 above, it is only the nature of the use that forms the subject matter of the present dispute.
95
It follows that the Board of Appeal’s assessments relating to the use of the contested mark for parts and accessories are flawed.
96
Furthermore, it should be observed that, as the applicant has submitted, the use of the contested mark for parts and accessories may also constitute use of that mark for ‘automobiles’, a proposition that the Board of Appeal wrongly rejected.
97
The Court of Justice has held that the use, by or with the consent of its proprietor, of a registered trade mark in respect of replacement parts forming an integral part of the goods covered by that mark is capable of constituting ‘genuine use’, within the meaning of Article 51(1)(a) of Regulation No 207/2009, not only for the replacement parts themselves but also for the goods covered by that mark. It is irrelevant in that regard that the registration of that mark covers not only entire goods but also replacement parts thereof (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 35).
98
Accordingly, a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to ‘genuine use’, within the meaning of Article 51(1)(a) of Regulation No 207/2009, in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 53).
99
The Board of Appeal must therefore assess in a concrete manner – primarily in relation to the goods or services for which the proprietor of a mark has furnished proof of use of its mark – whether those goods or services constitute an independent subcategory in relation to the goods and services falling within the class of goods or services concerned, so as to link the goods or services for which genuine use of the mark has been proved to the category of goods or services covered by the registration of that trade mark (see, to that effect and by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 41 and the case-law cited).
100
However, the Board of Appeal did not carry out such an examination in the contested decision. It did not find that the parts and accessories constituted an autonomous subcategory in relation to automobiles, such that proof of use in respect of the former was irrelevant as regards the latter.
101
The Board of Appeal merely noted, first, that there was a disproportion in economic value between the spare parts and accessories and the automobiles. However, it should be stated, as the applicant did, that in basing its conclusion on the economic value of the parts and accessories, the Board of Appeal failed to take account of settled case-law according to which, since consumers are searching primarily for a product or service which can meet their specific needs, the purpose or intended use of the product or service in question is vital in directing their choices. Consequently, since consumers employ the criterion of the purpose or intended use before making any purchase, that criterion is of fundamental importance in the definition of a subcategory of goods or services (judgments of 13 February 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 29; of 16 May 2013, Aleris v OHIM – Carefusion 303 (ALARIS), T‑353/12, not published, EU:T:2013:257, paragraph 22; and of 24 January 2024, Agus v EUIPO – Alpen Food Group (ROYAL MILK), T‑603/22, not published, EU:T:2024:29, paragraph 32).
102
Second, the Board of Appeal stated that the relevant public would not consider that the manufacturer of the parts and accessories would have the technical capacity to build cars, since it is well known that car manufacturers do not produce all the parts and accessories for their cars. However, while it is true that not all the parts and accessories are normally produced by the car manufacturers themselves – and, conversely, that manufacturers of such parts and accessories do not necessarily build cars – it is equally well known that a number of spare parts and accessories are indeed produced by the car manufacturers themselves, or by third parties under licence. Accordingly, there is no general rule according to which the relevant public considers that a car must have a different manufacturer from its parts and accessories.
103
In the light of the above, the contested decision is also vitiated by errors of assessment as regards the relevance of the evidence relating to parts and accessories in proving use of the contested mark for automobiles. Those errors are in addition to the one identified in paragraph 60 above.
104
It follows from the foregoing that the fourth plea must be upheld.
105
In the light of the foregoing, and contrary to EUIPO’s submissions, the defects in the statement of reasons referred to in paragraphs 72 and 78 above do affect the outcome of the dispute. It follows that the contested decision is vitiated both by a failure to state reasons, as regards the admissibility of the evidence relating to parts and accessories, and by errors of assessment, as regards its substantive examination of that evidence, and must therefore be annulled on that point as well.
106
The contested decision must therefore be annulled in its entirety, without it being necessary to examine the first plea.
Costs
107
Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since EUIPO and the intervener have been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
108
In addition, the applicant has applied for the costs it incurred in the proceedings before the Board of Appeal to be paid by EUIPO and the intervener. In that regard, it must be pointed out that, under Article 190(2) of the Rules of Procedure, only costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Consequently, EUIPO and the intervener must also be ordered to pay the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Eighth Chamber, Extended Composition)
hereby:
1.
Annuls the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2023 (Joined Cases R 334/2017-5 and R 343/2017-5);
2.
Orders EUIPO and Mr Kurt Hesse to bear their own costs and to pay those incurred by Ferrari SpA, including the costs necessarily incurred for the purposes of the proceedings before the Board of Appeal.
Kornezov
De Baere
Petrlík
Kecsmár
Kingston
Delivered in open court in Luxembourg on 2 July 2025.
V. Di Bucci
Registrar
M. van der Woude
President
(
*1
)	Language of the case: English.