The Testarossa is one of the most well-known Ferrari models from the 80’s and 90’s. Ferrari has not launched new cars under the Testarossa trademark since the model went out of production in 1992. The trademark therefore seems to have not been used for about 25 years. According to the German judge, this is enough reason to rule that Ferrari may no longer exercise their trademark upon third parties. Technically, this is correct: a trademark owner can no longer rely on a trademark if the trademark hasn’t been used for over 5 years.
An important exception to this are trademarks that – even though they are not being used for quite some time – still enjoy a certain reputation. The EU Court ruled in 2013 that the trademark Simca, a French car company that disappeared from the showrooms in the 80’s, still maintained a reputation in the eyes of consumers. An application for the Simca trademark by a third party was for that reason in bad faith, as the trademark applicant wanted to benefit from the remaining fame of the brand.
The result of the Simca case was aimed at the application of a trademark and not the direct use of it. Yet one might argue that this also applies to the use of a trademark such as Testarossa. The ‘commercial logic’ by which the toy manufacturer is using the trademark, seems to be a way of piggybacking – parasitizing - on the familiarity of Testarossa. The toy manufacturer is mainly known for its creation of model cars.
Ferrari can still appeal against the judgment of the German court. The conflict might not be over yet.