## Facts

- Ferrari owned an EU trade mark registration for a three-dimensional mark depicting the shape of the Ferrari 250 GTO, covering goods in Classes 12 (vehicles), 25 (clothing), and 28 (games and playthings, including toy and scale-model vehicles).
- The 250 GTO was produced in limited numbers in the early 1960s and remained traded in the collector market.
- Ares, a coachbuilder associated with a planned modern “reinterpretation” of the 250 GTO, sought revocation of Ferrari’s 3D mark for nonuse.
- Ares filed a revocation action alleging no genuine use in the European Union during the five-year period from December 12, 2013 to December 11, 2018.
- Ferrari relied on evidence including third-party auctions/resales of original cars, Ferrari-provided after-sales activities (maintenance, repair, restoration, spare parts), sales documentation for toy/scale-model 250 GTOs, and apparel materials depicting the car.

## Issues

1. Whether the proprietor proved genuine use of the 3D shape mark in the EU for the registered goods during the relevant five-year period, such that revocation for nonuse should be denied.
2. Whether third-party resale/auction activity and the proprietor’s after-sales services constituted genuine use of the 3D shape mark for “vehicles” in Class 12.
3. Whether, if use was shown only for some goods, the registration should be partially revoked and limited to the goods for which genuine use was proven.

## Decision

- The Cancellation Division partially revoked the registration for nonuse.
- The mark was revoked for Class 12 (vehicles) because Ferrari did not prove genuine use of the 3D shape mark for those goods during the relevant period.
- The mark was revoked for Class 25 (clothing) because the submitted materials did not show genuine trade mark use of the 3D shape for apparel.
- The registration was maintained only for “toy vehicles” and “scale-model vehicles” within Class 28, based on sales evidence during the relevant period.

## Legal Principles

- A registered mark is subject to revocation if the proprietor fails to show genuine use in the EU for a continuous five-year period for the goods/services covered.
- Genuine use must reflect commercial use by the proprietor (or with its consent) of the contested mark; third-party resale or auctions, without proprietary trade mark use, do not establish genuine use.
- After-sales activities can support genuine use only when they are carried out under, and demonstrate market use of, the contested mark itself; use under other signs does not prove use of a separate 3D shape mark.
- Where genuine use is proven only for specific goods within a broader specification, protection is preserved only for those goods and revoked for the remainder.

## Conclusion

The EUIPO Cancellation Division held that Ferrari failed to prove genuine use of its 3D Ferrari 250 GTO shape mark for vehicles and clothing during the relevant period, but proved genuine use for toy and scale-model vehicles, requiring partial revocation and a narrowed specification.


Ares Performance AG v. Ferrari S.p.A., No. C 30 743 (E.U.I.P.O. Cancellation Div. May 29, 2020)