There’s nothing more iconic than a red 1984 Testarossa Ferrari roaring on a winding Italian county road. However, a German court ruled last week that Ferrari no longer has any right to use the Testarossa brand due to non-use of the trade mark.
Testarossa, meaning “red head” in Italian, began production in 1984. The model was named after the car used by Ferrari to win the World Sportscar Championship in 1957.
Autec AG, a toy company, challenged Ferrari to prove it had still been using the Testarossa brand since the model ceased production in 1996. After a lengthy trial, it was determined that, aside from providing spare parts and repairs for old Testarossa models, there had been no cars, no merchandise or any products sold by Ferrari using the Testarossa name for over a decade and therefore non-use of the mark was determined.
Despite the historical significance of the car and its strong links to Ferrari, a spokesperson of the court stated:
“A brand needs to be used to protect it, which the company has not done here.”
Autec AG now has exclusive rights to use the Testarossa brand. They plan to use it for the sale of electric shavers and bicycles. They also have the right to licence use of the Testarossa name to other companies and seek compensation for any breaches of their exclusive rights to its use.
This decision is not restricted to Germany in which courts the legal battle was fought. It effects all member countries of the European Union and will likely affect the brand internationally. While it is unknown whether an Italian court may have had a different approach to a case concerning such an iconic Italian car brand, the only recourse for Ferrari now is to appeal the decision.
The loss of such a significant and long-standing trade mark demonstrates that it does not matter how old or how successful a company or brand is. It is not enough that a brand is well known or was used frequently at one time. With 135,000 new EU trade mark applications each year, the need to actively maintain existing trade marks has never been more important.