Interpretation of Directive 2008/95/EC: The CJEU Clarifies Serious Use in Trademark Law

Can Use in Switzerland be Considered in Evaluating Serious Use of a Trademark in Germany (and Vice Versa) under the German-Swiss Convention of April 13, 1892?

CJEU, October 22, 2020, Joined Cases C-720/18 and C-721/18, Ferrari SpA v. DU

In a ruling on October 22, 2020, the Court of Justice of the European Union provided insights into the interpretation of Directive 2008/95/EC of the European Parliament and of the Council of October 22, 2008, which approximates the laws of the Member States relating to trademarks. This was in response to two requests for a preliminary ruling submitted by the Oberlandesgericht Düsseldorf. The facts are as follows:

Since 1987 and 1990, the Italian automobile manufacturer Ferrari has held the international trademark "TESTAROSSA" and the same trademark in Germany, designating a car model. Production of this model subsequently ceased, and Ferrari used the two trademarks to identify spare parts and accessories for luxury sports cars previously marketed under these trademarks.

In two disputes between Ferrari Spa and DU, the Landgericht (Regional Court) Düsseldorf ordered the cancellation of the two "TESTAROSSA" trademarks for lack of serious use in Germany and Switzerland for the products registered in class 12. The Italian car manufacturer appealed to the Oberlandesgericht (Higher Regional Court) Düsseldorf, which, after ruling on certain points, decided to stay the proceedings and refer several questions to the Court.

In this context, the Court was able to rule on the interpretation of Article 12(1) and Article 13 of Directive 2008/95/EC and to decide on the following points:

Can the use of a trademark be considered serious when the trademark registered for a broad category of products and their components is only actually used for a specific market segment or only for spare parts or accessories for those products? The use of a trademark registered for a broad category of products can be considered serious for all the products and their components within the meaning of Article 12(1) of the Directive, even if it only concerns a specific market segment (in this case, luxury sports cars) or only spare parts or accessories for those products. It is different if, for the consumer, it is an autonomous subcategory of the product category for which the trademark has been registered.

Can the holder of a trademark who sells second-hand products that have already been marketed by them in the European Economic Area prevent the serious use of their trademark? A holder is not prevented from making serious use of their trademark when selling second-hand products that have already been marketed with their consent under that trademark.

Can a holder who provides certain services related to products previously marketed under a registered trademark make serious use of that trademark? The Court continued its reasoning by clarifying that the provision of services related to products previously marketed under a registered trademark can justify serious use of that trademark if the services are provided under that trademark.

Under Article 5 of the 1892 German-Swiss Convention, can the use of a trademark in Switzerland be considered in evaluating the serious use of the trademark in Germany within the meaning of Article 12(1) of Directive 2008/95/EC? Under the 1892 Convention between Germany and Switzerland on the reciprocal protection of patents, designs, models, and trademarks, the use of a registered trademark in one of these states on the territory of the other must be considered to determine if this trademark has been subject to "serious use." According to the Court, the 1892 Convention is incompatible with European Union law, and Germany must take necessary measures to resolve this incompatibility.

Consequently, Germany denounced the 1892 Convention, and since May 31, 2022, use in Switzerland is no longer considered in evaluating the serious use of a trademark in Germany. However, opinions suggest that the repeal of this convention does not have retroactive effects, potentially considering use in Switzerland in the evaluation of serious use before the repeal of the said convention.