Cancellation TESTAROSSA – well know trademark

In many countries trademarks have to be used within 5 years, if not, third parties can initiate a cancellation procedure. Could this rule be used, to obtain a well-known trademark which is not being used anymore? This question was recently brought before the German Court.

From 1984 till 1996, Ferrari produced the TESTAROSSA cars. Famous, among other reasons, for the popular 80’s TV-show Miami Vice. In 2013 the trademark TESTA ROSSA is filed in Germany and the EU, for electrical bicycles. According to the German press, this party did not want to pay for the costly license offered by Ferrari. The latter files an opposition against the (unauthorized) trademark application of TESTA ROSSA and the applicant strikes back with a cancellation action, due to non-use of the TESTAROSSA trademark for a period longer than 5 years.

The judge agrees. Ferrari still offers services like maintenance and repair in its own name, but not by the name TESTAROSSA. Also the sale of used cars is no sufficient ground to maintain the trademark rights. So the TESTAROSSA trademark has been cancelled. Fortunately, TESTAROSSA is still a well-known trademark. It is likely that Ferrari will win the case in the EU-procedure, in which they did base the claim on protection of a well-known trademark. Photo copyrights: Ferrari

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IP quiz Trademarks

Puma is one of the bigger sports and lifestyle brands in the world. The core-business is the design, development and sale of (sports) shoes, (sports) clothing and accessories. In 1960, Puma registered an international trademark for a device designed in 1958: the formstrip. Since then, Puma has registered approximately 90 formstrip trademarks with validity in the Benelux or the European Union. Puma claims that this is a serial mark. Monshoe is a wholesaler of women's shoes and related products. The company designs and develops Monshoe shoes which it largely markets itself. Monshoe sells its women's shoes under the brands Shoecolate and Pearlz. The shoe Shoecolate is offered in various colour combinations. Puma claims that Monshoe infringes its well-known formstrip trademark. Monshoe contradicts this and states that the average consumer will not perceive the device of Monshoe on the sneakers as a trademark. And if the public will recognize a trademark in the decoration, it will not make the connection to Puma. According to Monshoe, the formstrip logo is not a well-known trademark within the meaning of the BVIE and the UMVo. There is no likelihood of confusion because the sign does not or hardly evoke any association with Puma among the public. In light of the above, who is right? Does this constitute decorative use or linking to a well-known trademark?