Source: EURLEX
Language: en
Format: md

JUDGMENT OF THE GENERAL COURT (Eighth Chamber, Extended Composition)

2 July 2025 (
[\*1](#t-ECR_62023TJ1104_EN_01-E0001)
)

(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 – Scale toy land motor vehicles)

In Case T‑1104/23,

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 and the alteration of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 29 August 2023 (Case R 887/2016-5) (‘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, the applicant, Ferrari SpA, requested the protection in the European Union of the word mark TESTAROSSA. |

| 3 | The international registration was published in the Community Trade Marks Bulletin on 12 February 2007 and the trade mark was entered in the Register of Community trade marks on 17 December 2007. |

| 4 | The goods covered by the mark fall, inter alia, within Class 28 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, inter alia, to the following description: ‘scale toy land motor vehicles, modular structures construction toys and connecting links therefor, toy construction block kits’. |

| 5 | On 14 November 2014, 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 4 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:2009:078:TOC)), 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:2017:154:TOC))), 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 18 March 2016, the Cancellation Division partially granted the application for revocation. It rejected that application in respect of ‘scale toy land motor vehicles’ (‘scale model vehicles’), but upheld it in respect of the other goods in Class 28. |

| 7 | On 12 May 2016, the intervener filed a notice of appeal seeking partial annulment of the Cancellation Division’s decision, in so far as the Cancellation Division had refused to revoke the contested mark in respect of scale model vehicles. |

| 8 | On 17 October 2016, the applicant brought a cross-appeal also seeking partial annulment of the Cancellation Division’s decision, in so far as the Cancellation Division had revoked the contested mark in respect of ‘modular structures construction toys and connecting links therefor, toy construction block kits’ in Class 28. |

| 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 4 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 scale model vehicles; |  | – | order EUIPO and the intervener to pay the costs incurred in the proceedings before the Board of Appeal and in the present proceedings. | |

| 11 | EUIPO contends that the Court should:   | – | dismiss the action; |  | – | order the applicant to pay the costs if a hearing is convened. | |

| 12 | 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

| 13 | In view of the date of submission of the application for revocation at issue, that is to say 14 November 2014, 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:1995:303:TOC)) (see, to that effect, judgments of 6 June 2019, Deichmann v EUIPO, [C‑223/18 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2019%3A471&locale=en), not published, [EU:C:2019:471](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2019%3A471), paragraph [2](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2019%3A471&anchor=#point2), and of 3 July 2019, Viridis Pharmaceutical v EUIPO, [C‑668/17 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2019%3A557&locale=en), [EU:C:2019:557](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2019%3A557), paragraph [3](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2019%3A557&anchor=#point3)). |

| 14 | 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2012%3A781&locale=en), [EU:C:2012:781](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2012%3A781), paragraph [45](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2012%3A781&anchor=#point45) 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](./../../../legal-content/EN/AUTO/?uri=OJ:L:2018:104:TOC)), 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2021%3A157&locale=en), not published, [EU:T:2021:157](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2021%3A157), paragraph [20](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2021%3A157&anchor=#point20)). |

| 15 | 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. |

Claim for annulment of the contested decision

Scope of the first head of the form of order sought

| 16 | By the first head of the form of order sought, the applicant seeks the annulment of the contested decision, without giving further clarification. |

| 17 | However, it is apparent from an overall reading of the application that the applicant does not challenge the contested decision to the extent that it dismissed its appeal seeking annulment of the decision of the Cancellation Division in so far as the latter ordered the revocation of the contested mark in respect of ‘modular structures construction toys and connecting links therefor, toy construction block kits’ in Class 28. |

| 18 | It follows, therefore, that in reality the applicant is seeking only the partial annulment of the contested decision, in so far as the Board of Appeal ordered the revocation of the contested mark in respect of scale model vehicles in Class 28. |

Substance

| 19 | The applicant puts forward two 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, and secondly, infringement of Article 51(1)(a) of Regulation No 207/2009, in that the Board of Appeal wrongly held that it had not demonstrated genuine use of the contested mark in respect of scale model vehicles. |

| 20 | The second plea should be examined first. |

| 21 | 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 or on the basis of a counterclaim in infringement proceedings if, within a continuous period of five years – running, in the present case, from 14 November 2009 to 13 November 2014 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. |

| 22 | 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. |

| 23 | 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2003%3A145&locale=en), [EU:C:2003:145](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2003%3A145), paragraph [43](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2003%3A145&anchor=#point43)). 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160&locale=en), not published, [EU:T:2015:160](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160), paragraph [25](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160&anchor=#point25) and the case-law cited, and of 11 January 2023, Hecht Pharma v EUIPO – Gufic BioSciences (Gufic), [T‑346/21](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2023%3A2&locale=en), [EU:T:2023:2](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2023%3A2), paragraph [22](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2023%3A2&anchor=#point22) (not published) and the case-law cited). |

| 24 | 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2009%3A354&locale=en), not published, [EU:T:2009:354](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2009%3A354), paragraph [36](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2009%3A354&anchor=#point36) and the case-law cited). |

| 25 | 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160&locale=en), not published, [EU:T:2015:160](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160), paragraph [26](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160&anchor=#point26) and the case-law cited). |

| 26 | As regards, in particular, the characteristics of the market for scale model vehicles, the Court has had occasion to consider, in its judgment of 25 January 2007, Adam Opel ([C‑48/05](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&locale=en), [EU:C:2007:55](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55)), the question whether, where a trade mark is registered both for motor vehicles and for toys, as in the present case, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of that make of car, in order to reproduce it faithfully, and the marketing of those scale models constitutes a use which the trade mark proprietor is entitled to prevent. |

| 27 | In that regard, the Court has stated that the exercise of the exclusive right of a trade mark proprietor must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods (see, to that effect, judgment of 25 January 2007, Adam Opel, [C‑48/05](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&locale=en), [EU:C:2007:55](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55), paragraph [21](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&anchor=#point21)). |

| 28 | Therefore, by virtue of Article 9(1) of Regulation No 207/2009, the affixing, by a third party, of a sign identical to a trade mark registered for toys to scale models vehicles cannot be prohibited unless it affects or is liable to affect the functions of that trade mark (see, to that effect, judgment of 25 January 2007, Adam Opel, [C‑48/05](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&locale=en), [EU:C:2007:55](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55), paragraph [22](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&anchor=#point22)). |

| 29 | The issue of whether such affixing affects or is liable to affect the functions of the trade mark must be determined having regard to the specific characteristics of the market for scale model vehicles. In that regard, it must be determined whether the average consumer, being reasonably well informed and reasonably observant and circumspect, is used to scale model vehicles being based on real examples and whether that consumer even accords great importance to absolute fidelity to the original, so that he or she will understand that the fact that the car manufacturer’s trade mark is affixed to the scale model merely indicates that it is a reduced-scale reproduction of a car of that make. In such a case, according to the Court , the relevant public would not perceive a sign identical to that mark, affixed to a scale model vehicle sold by a third party, as an indication that the scale model was made by the car manufacturer or an undertaking economically linked to it, and such use would not therefore affect the essential function of that mark as a mark registered for toys (see, to that effect, judgment of 25 January 2007, Adam Opel, [C‑48/05](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&locale=en), [EU:C:2007:55](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55), paragraphs [23](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&anchor=#point23) and [24](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2007%3A55&anchor=#point24)). |

| 30 | In the contested decision, the Board of Appeal stated that the market for scale model vehicles was characterised by the coexistence of independent toy manufacturers – which use marks that are also registered for automobiles, such as the contested mark, simply to indicate that the scale model is a faithful reproduction of a real car – and scale models manufactured and sold directly by the proprietors of such marks or by undertakings economically linked to them, in particular by virtue of a licence. |

| 31 | The Board of Appeal also stated that the relevant public was used to seeing scale model vehicles both with and without a licence from the car manufacturer, depending on the information on the packaging. The parties do not dispute those findings. |

| 32 | It follows that a third party may use such a mark without the consent of its proprietor, provided that the use made of that mark by the third party on a scale model vehicle is limited to indicating to the relevant public that the scale model is a faithful reproduction of a real car. |

| 33 | By contrast, where the use made of the mark by a third party goes beyond a mere indication that the reproduction is faithful to the original, in that, as part of the marketing of the scale model vehicles in question, reference is made – to take the example aptly raised by the Board of Appeal – to a licensing agreement entered into with the proprietor of the mark, such use will be perceived as an indication that those goods originate from the car manufacturer or from an undertaking economically linked to it by such an agreement. Such use would reflect the essential function of the trade mark, which is to indicate the commercial origin of the goods. In that situation, the trade mark proprietor would be entitled to oppose such use of its mark by a third party without its consent. |

| 34 | The applicant’s arguments must be examined in the light of those considerations. |

| 35 | As a preliminary point, it should be stated that while, as pointed out in paragraph 22 above, proof of use must relate to the place, time, extent and nature of use of the contested mark, the Board of Appeal confined itself, in the contested decision, to assessing the nature of the use of the contested mark, as EUIPO acknowledged at the hearing. In those circumstances, that is the only factor which is subject to review by the General Court in the present case. |

| 36 | Furthermore, it is not disputed that the evidence produced by the applicant includes the contested mark, sometimes in the form in which it was registered, namely TESTAROSSA, and sometimes in the form of two separate verbal elements, namely ‘testa’ and ‘rossa’, but that this variation does not affect the distinctive character of the mark, as the Board of Appeal rightly observed, so that there is no need to distinguish between those two forms of use. |

| 37 | Moreover, with regard to the evidence concerning the use of the contested mark by Amalgam, the Board of Appeal found that it related only to large scale models which were not intended to be played with, and thus did not demonstrate use of the contested mark for the goods covered by it. It therefore dismissed that evidence as irrelevant. When questioned on that point at the hearing, the applicant stated that it did not challenge that aspect of the contested decision. |

| 38 | Lastly, it is common ground that, during the relevant period, scale model Testarossa vehicles were marketed not by the applicant itself, but by third parties, more specifically manufacturers of such scale models. |

| 39 | It is in the light of those preliminary considerations that the Court must examine, first, whether the contested mark was used in accordance with its essential function, and secondly, if so, whether the use was with the applicant’s consent. |

– Use of the contested mark in accordance with its essential function

| 40 | In the contested decision, the Board of Appeal held, in essence, that the use made by third parties of the contested mark was limited to indicating that the scale model vehicles in question were faithful reproductions of genuine Testarossa cars. It reached that conclusion on the basis, inter alia, of its observations that, on the evidence produced by the applicant, the scale model vehicle packaging was dominated by the trade marks of the third parties, that the words ‘Ferrari Official Licensed Product’ did not refer to the contested mark, and that that mark was not accompanied by the symbols ‘TM’ or ‘®’, such that the mark was not being used as an indication of the commercial origin of the scale models. The Board of Appeal also stated that the fact that the contested mark was affixed by third parties to scale model vehicles, manufactured by those third parties to varying standards of quality and marketed at different prices, ran counter to the conclusion that the contested mark had been used as an indicator of the commercial origin of the goods. |

| 41 | The applicant submits that the use of the contested mark for scale model vehicles is not limited to indicating that those vehicles are reduced-scale reproductions of a vehicle bearing that mark, on the basis that the evidence it has produced shows that that use of the contested mark was pursuant to licences it had granted to third parties, and the contested mark was thus being used in accordance with its essential function. The applicant also submits that the fact that the symbols ‘TM’ and ‘®’ were not used alongside the contested mark cannot mean that use of the mark is not in accordance with its essential function. |

| 42 | EUIPO, supported by the intervener, submits that the Board of Appeal was right to hold that the evidence did not demonstrate use of the contested mark in accordance with its essential function, in so far as the marks identifying the commercial origin of the goods were not the contested mark, but various other marks, including the marks of independent toy manufacturers. It adds that that evidence shows only that the contested mark was used as a reference, to indicate that the scale model was a faithful reproduction of a genuine Testarossa car. |

| 43 | In that regard, first, it must be stated that the applicant produced several Bburago catalogues in which the contested mark appeared. Those catalogues, dating from 2011 to 2015, are entitled ‘Ferrari Race & Play’ and feature numerous scale models of Ferrari vehicles, including scale models of Testarossa vehicles. Most of those catalogues also contain, on the cover, the words ‘Ferrari Official Licensed Product’, followed by: ‘Produced under license of Ferrari Spa. FERRARI, the PRANCING HORSE device, all associated logos and distinctive designs are property of Ferrari Spa. The body designs of the Ferrari cars are protected as Ferrari property under design, trademark and trade dress regulations’. In all those catalogues, the contested mark appears under photographs of scale model Testarossa vehicles. In the top left-hand corner of the catalogue, the Bburago logo also appears, while the word mark Ferrari is prominent in the top-centre. |

| 44 | The applicant also produced evidence relating to the use of the contested mark by the company Hachette, consisting in particular of photographs of scale model Testarossa vehicles in their packaging. The contested mark appears in large characters on the upper part of the packaging and on the scale model mount. The word mark Ferrari appears, in very large letters, next to a prancing horse, on the upper part of the packaging. In addition, the words ‘Ferrari Official Licensed Product’ are clearly legible on the lower part of the packaging. The word ‘Hachette’ appears at the bottom of the packaging. |

| 45 | In that regard, first, it must be stated that the Board of Appeal was wrong to find that the packaging of the scale model vehicles in question was ‘dominated’ by third party trade marks. That finding does not reflect the reality of the matters set out in paragraphs 43 and 44 above. |

| 46 | That conclusion is not called into question by the observation made by the Board of Appeal – and supported by EUIPO and the intervener – that the contested mark was used in conjunction with other marks, belonging both to the applicant and to other undertakings. It is apparent from settled case-law that the condition of genuine use of a trade mark may only be satisfied where that 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2020%3A439&locale=en), [EU:T:2020:439](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2020%3A439), paragraph [142](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2020%3A439&anchor=#point142) and the case-law cited). |

| 47 | That is the case here. On the material referred to above, not only is the contested mark itself clearly visible, but the figurative Ferrari mark representing a prancing horse, the word mark Ferrari and, above all, the wording ‘Ferrari official licensed product’ also appear, as well as the marks of the third party manufacturers of the scale model vehicles. Those indications enable the relevant public to understand that the scale model vehicles bearing the contested mark are manufactured by a third party under licence from the applicant, such that the use of the contested mark is in accordance with its essential function, which is to guarantee to consumers the commercial origin of those goods. |

| 48 | The mere fact, noted by the Board of Appeal, that the scale model Testarossa vehicles are marketed by different undertakings and vary in quality and price does not mean that the use is not in accordance with the essential function of the mark. As has been stated in paragraph 47 above, third party undertakings affix the wording ‘Ferrari Official Licensed Product’ to their product packaging or their catalogues, thereby establishing a clear link with the applicant – the proprietor of the contested mark – and thus indicating the commercial origin of the goods to the relevant public. |

| 49 | In addition, and contrary to what the Board of Appeal held, it matters little that the wording ‘Ferrari Official Licensed Product’ does not refer as such to the contested mark, given, first, that that mark appears clearly either next to the wording or, in the catalogues, below the photographs of the relevant scale models, and secondly, that, by virtue of that wording, the relevant public will make a link between the applicant – the proprietor of the contested mark – and the toy manufacturers marketing the goods in question under that mark. |

| 50 | It is well known that, in the car market, cars are marketed under a first trade mark designating the manufacturer and, at the same time, under a second mark, designating the model. Those observations are also relevant to the market for scale model vehicles, given that such models are intended to be faithful replicas of real cars, and the relevant public is therefore accustomed to referring simultaneously to the manufacturer’s mark and to that of the specific model. It follows that the link between the use of the Ferrari mark and the contested mark on the packaging and catalogues is consistent with market practice. |

| 51 | Secondly, it must be held that, as the applicant has stated, the Board of Appeal was wrong to regard the fact that the contested mark was not accompanied by the symbols ‘TM’ or ‘®’ as a basis for finding that it was not used in accordance with its essential function. There is no obligation to use the symbols ‘®’ or ‘TM’ in order for the use of a mark to be considered to be in accordance with its essential function. The absence of those symbols does not affect either the validity or the essential function of an EU trade mark. Accordingly, the fact that they do not appear alongside the contested mark in the evidence does not in any way alter the capacity of the contested mark to fulfil its essential function of identifying the commercial origin of the goods in question and distinguishing them from those of other undertakings. |

| 52 | Thus, the evidence produced by the applicant and referred to above, taken as a whole, permits the conclusion that the contested mark was used, during the relevant period, for scale model vehicles, in accordance with its essential function, which is to guarantee the commercial origin of the goods for which it was registered. |

– The applicant’s consent to the use of its trade mark by third parties

| 53 | 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. |

| 54 | 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 (judgment of 11 May 2006, Sunrider v OHIM, [C‑416/04 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2006%3A310&locale=en), [EU:C:2006:310](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2006%3A310), paragraph [44](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2006%3A310&anchor=#point44)). |

| 55 | In the contested decision, the Board of Appeal held that the applicant had not shown that the third parties, when using the contested mark for scale model vehicles, were acting with its consent. In particular, it observed that it was impossible to say, based on the extracts from the licence agreements produced by the applicant, whether the contested mark was covered by those agreements. It also observed that the evidence referred to in paragraphs 43 and 44 above did not prove the applicant’s consent, in particular because the wording indicating that the goods sold were Ferrari official licensed products did not mention the contested mark. |

| 56 | The applicant contests that finding. In that regard, it states that it produced a number of extracts from licence agreements concluded between it and third parties for the sale and production of scale model vehicles. The Board of Appeal wrongly disregarded those licence agreements, despite the fact that they show its consent to the use of the contested mark by those third parties. The applicant also submits that, although it is not possible to say, based on the extracts from the licence agreements, whether those agreements cover the contested mark, the wording used on the packaging and in the catalogues, including the wording referred to in paragraphs 43 and 44 above, permit the conclusion, in any event, that it consented, at least impliedly, to the use of its trade mark by third parties, since it was aware of that use and never objected to it. |

| 57 | EUIPO agrees with the Board of Appeal’s conclusion that the extracts from the licence agreements produced by the applicant did not support the conclusion that the licensees had authorisation to use the contested mark. It adds that to hold that the applicant had consented to the use of the contested mark would run counter to the case-law according to which genuine use cannot be demonstrated by probabilities or presumptions. |

| 58 | The intervener submits that it was for the applicant to demonstrate, unequivocally, that it had consented to the use of the contested mark and that, in that regard, the decisive factor should not be the view of the relevant public, but the actual relationship between the applicant and the third party manufacturers of scale model vehicles. Furthermore, the fact that the applicant did not oppose the use of the contested mark by third parties cannot suffice to demonstrate its consent. Moreover, the applicant has raised that argument for the first time in the present action. |

| 59 | In that regard, first, it should be stated that, as the Board of Appeal observed, the extracts from the licence agreements produced by the applicant do not contain a list of the trade marks they cover. In those circumstances, those extracts do not establish that the applicant expressly consented to the use of its mark by the third parties. |

| 60 | Secondly, as regards the applicant’s argument that, in any event, the evidence it has produced, taken as a whole, demonstrates that it impliedly consented to the use of the contested mark by third parties, it should be observed that, according to the case-law, the consent of a trade mark proprietor may be express or implied. Consent must be so expressed that an intention to renounce the proprietor’s 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2011%3A7&locale=en), not published, [EU:T:2011:7](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2011%3A7), paragraph [61](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2011%3A7&anchor=#point61) and the case-law cited, and of 8 June 2022, Muschaweck v EUIPO – Conze (UM), [T‑293/21](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2022%3A345&locale=en), [EU:T:2022:345](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2022%3A345), paragraph [71](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2022%3A345&anchor=#point71) (not published). |

| 61 | It is therefore necessary to examine whether such implied consent on the part of the applicant can be inferred from facts and circumstances prior to, simultaneous with or subsequent to the use of the contested mark by a third party. |

| 62 | The relevant facts and circumstances potentially reflecting such implied consent must be examined, as EUIPO acknowledged 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160&locale=en), not published, [EU:T:2015:160](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160), paragraph [26](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2015%3A160&anchor=#point26) and the case-law cited). |

| 63 | In that regard, first of all, it should be observed that, as pointed out in paragraph 33 above, in the specific context of the market in question, the proprietor of a mark registered for both cars and scale model vehicles is entitled to oppose the use of that mark by a third party if that use goes beyond a mere indication that the scale model vehicles in question are faithful representations of the real car and extends to the commercial origin of those models, indicating that they originate from the trade mark proprietor or from an undertaking related to it. |

| 64 | As is apparent from paragraph 52 above, that is the case here. Thus, against that background, the implied consent of the trade mark proprietor follows from the fact that it was aware of the use of its mark by third parties and did not object to it. |

| 65 | The evidence described and assessed in paragraphs 43 to 49 above shows that the applicant was aware of the use of the contested mark by third parties, who presented the goods in question as ‘official’ Ferrari-licensed products, and that it did not object to that use, which demonstrates that it at least impliedly consented to it. |

| 66 | Neither EUIPO nor the intervener disputes that the applicant had actual knowledge of that use, which moreover is demonstrated by the fact that the evidence produced by the applicant includes, amongst other things, publicly accessible evidence such as catalogues and product packaging. |

| 67 | Furthermore, in so far as the intervener maintains that it is only in the present action that the applicant has asserted, for the first time, that it did not object to such use, suffice it to state that it is apparent from the file that, throughout the administrative proceedings, the applicant maintained that third parties had acted with its consent, and thereby asserted, impliedly but necessarily, that it did not object to such use. |

| 68 | Moreover, 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 to it 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 (judgments of 17 February 2011, J & F Participações v OHIM – Plusfood Wrexham (Friboi), [T‑324/09](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2011%3A47&locale=en), not published, [EU:T:2011:47](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2011%3A47), paragraph [32](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2011%3A47&anchor=#point32), and of 16 October 2024, Fractal Analytics v EUIPO – Fractalia Remote Systems (FRACTALIA), [T‑194/23](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2024%3A696&locale=en), not published, [EU:T:2024:696](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2024%3A696), paragraph [102](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2024%3A696&anchor=#point102) and the case-law cited). |

| 69 | Those considerations apply mutatis mutandis where a trade mark of a production company, such as the contested mark, is used by another company marketing the goods at issue as ‘official’ goods licensed by the first company. Such use 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 consented, albeit impliedly, to the use of its trade marks by the second company. |

| 70 | Lastly, the applicant also produced a number of invoices and order forms issued by third parties in relation to the sale of scale model vehicles bearing the contested mark. 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 for the purposes 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](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AT%3A2004%3A225&locale=en), [EU:T:2004:225](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AT%3A2004%3A225), paragraph [24](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AT%3A2004%3A225&anchor=#point24)). |

| 71 | Consequently, the Board of Appeal was wrong to hold that the applicant had not shown that it had consented, even impliedly, to the use of the contested mark by third parties in respect of the goods at issue, within the meaning of Article 15(2) of Regulation No 207/2009. |

| 72 | It follows from all the foregoing that the applicant’s second plea must be upheld and the contested decision must be annulled in so far as the contested mark was revoked in respect of scale model vehicles in Class 28, without it being necessary to examine the first plea raised in the action. |

The claim for alteration of the contested decision

| 73 | As regards the applicant’s claim that the General Court should alter the contested decision, it should be observed that, while the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position, it must be exercised in situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011, Edwin v OHIM, [C‑263/09 P](./../../../legal-content/EN/AUTO/?uri=ecli:ECLI%3AEU%3AC%3A2011%3A452&locale=en), [EU:C:2011:452](./../../../legal-content/EN/TXT/PDF/?uri=ecli:ECLI%3AEU%3AC%3A2011%3A452), paragraph [72](./../../../legal-content/EN/TXT/HTML/?uri=ecli:ECLI%3AEU%3AC%3A2011%3A452&anchor=#point72)). |

| 74 | In the present case, it must be observed that, as stated in paragraph 35 above, the Board of Appeal did not adopt a position, in the contested decision, on the place, time and extent of the use of the contested mark, and accordingly it is not for the General Court to assess those matters in the context of an examination of the claim for alteration of that decision. |

Costs

| 75 | 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 essentially been unsuccessful, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant. |

| 76 | 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 noted 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 (Case R 887/2016-5) to the extent that the contested mark was revoked in respect of ‘scale toy land motor vehicles’ in Class 28; | |

|  | | 2. | Dismisses the action as to the remainder; | |

|  | | 3. | 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 |

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[\*1](#c-ECR_62023TJ1104_EN_01-E0001)
) Language of the case: English.

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