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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