EU trade mark disputes: Ferrari TESTAROSSA and coinbase

EU trade mark dispute: TESTAROSSA 

On 3 July 2025, the General Court of the European Union ruled on cases T-1103/23 and T-1104/23 concerning the rights of Ferrari SpA over the TESTAROSSA word mark for various products, including automobiles, components, accessories, and scale models.

In 2007, the international registration for the TESTAROSSA mark (no. 910752) was recorded in the Register of European Union Trade Marks for Classes 12 and 28 of the Nice Classification. 

In 2014 and 2015, respectively, Mr Kurt Hesse filed two applications for the partial revocation of the international registration with the EUIPO, on the grounds of a lack of genuine use of the mark for five consecutive years between 2010 and 2015. The Cancellation Division partially upheld both applications, revoking Ferrari’s rights in respect of most of the registered products and excluding only 'automobiles' in Class 12 and 'scale model vehicles' in Class 28. Both parties appealed against the decisions. Mr Hesse requested that the mark be revoked for the excluded products as well, while Ferrari sought to maintain protection for a broader range of goods, including parts, components and related products. However, the EUIPO’s Board of Appeal upheld Mr Hesse's appeals and dismissed Ferrari's, thereby revoking the mark for all the contested goods.

The General Court annulled both EUIPO decisions. Regarding automobiles (case T-1103/23), the Court noted that the Testarossa model was produced between 1984 and 1996 and that, subsequently, only second-hand vehicles were sold by Ferrari dealers or authorised distributors. The Court confirmed that, while this activity did not involve the production of new vehicles, it could constitute genuine use of the mark provided it served the essential function of indicating the commercial origin of the goods. This also includes use by third parties with the consent of the trade mark owner, whether explicit or implicit. The Court considered that the presence of commercial authorisations between Ferrari and its authorised distributors was sufficient to imply consent, particularly in the luxury second-hand automobile market, which is characterised by specific practices and extended product lifecycles. Furthermore, Ferrari had directly participated in certain sales by providing authentication certification services, thereby reinforcing its active involvement in the commercialisation process.

In relation to components and accessories, the Court highlighted that these were also marketed by authorised distributors during the relevant period, and noted that Ferrari offered a certification service to verify the commercial origin of key parts of the Testarossa model. Based on these findings, the Court concluded that Ferrari had implicitly consented to the use of the mark by these third parties, which was legally sufficient to establish genuine use.

As regards the scale model vehicles (case T-1104/23), the Court clarified that a third party may use a registered trade mark on toys without authorisation, provided it is used only to indicate that the product is a faithful reproduction of a real vehicle. However, if the use goes beyond this, such as when accompanied by the label 'official licensed Ferrari product', it suggests an economic link with the trade mark owner and requires their consent. Upon examining the submitted evidence, including catalogues and product photographs, the Court concluded that the TESTAROSSA mark had been used by third parties during the relevant period with this indication. Therefore, the Court concluded that the use was consistent with the essential function of the mark and had Ferrari's consent. As a result, the General Court held that Ferrari had demonstrated genuine use of the TESTAROSSA mark for all the goods in question during the relevant period, and thus annulled the EUIPO’s decisions to revoke the mark.

EU trade mak dispute: coinbase

On 11 June 2025, the General Court of the European Union delivered its judgment in case T-46/24 concerning the international word mark 'Coinbase' (no. 1308248). 

In December 2015, the Japanese company bitFlyer Inc. applied for the mark with WIPO, and it was granted protection in the European Union in February 2017 for goods and services in Classes 9, 35, 36, 38 and 42 of the Nice Classification. These classes include software, financial services, telecommunications and technology services related to blockchain technology and cryptocurrencies, among other things.

In 2018, the US company Coinbase Inc. filed an application with the EUIPO for the total invalidity of bitFlyer's registration, relying on its own international mark 'COINBASE', which had been protected in the European Union since 2015 and covered several goods and services in Classes 9, 36 and 42. Coinbase also argued that Bitflyer had applied for the mark without legitimate intent to use it and with knowledge of Coinbase's prior use of the sign, thereby acting in bad faith pursuant to Article 59(1)(b) EUTMR.

At first instance, the EUIPO’s Cancellation Division ruled in favour of Coinbase in part, declaring the invalidity of the international registration for several goods and services similar to those covered by the earlier mark. These included video game software, electronic circuits, downloadable publications, and image files (excluding telecommunications-related goods in Class 9); various financial services, such as brokerage, ATM rental, and credit assessment (in Class 36); access to electronic databases for e-commerce purposes (in Class 38); and technology services related to user authentication and software development for e-commerce transactions (in Class 42). However, the Division rejected the request to invalidate the registration for dissimilar goods and services and upheld the registration for a wide range of items in Classes 9, 35, 36, 38 and 42. These include scientific equipment, optical products, real estate services, advertising, commercial distribution and technology consulting.

Both parties appealed, and in 2021 the Board of Appeal ultimately dismissed Coinbase’s appeal. Coinbase then challenged this decision in the General Court, which overturned the original decision due to errors in the assessment and sent the case back to the EUIPO. Following a second review, the Board of Appeal again rejected the bad faith claim, a decision which Coinbase contested in case T-46/24.

In this case, the Court pointed out that bad faith must be assessed objectively and in its entirety, taking into account factors such as the applicant’s intention, the existence of direct competition, knowledge of the prior use of the sign by a third party and the level of legal protection afforded to the earlier mark.

Firstly, the Court noted that it had not been demonstrated that bitFlyer was aware of, or ought to have been aware of, Coinbase’s prior use of the sign outside the United States. Likewise, there was insufficient evidence that Coinbase had a strong reputation in the European Union or Japan, or that the two companies competed directly in the same markets, which could have created an assumption that bitFlyer was indeed aware of the existence of the prior mark.

Furthermore, the term 'coinbase' has a specific technical meaning within the blockchain environment, which reduces its distinctiveness and permits its legitimate use by various operators within the sector. The Court also took into account the fact that, at the time of the application, bitFlyer was already active in the cryptocurrency sector and engaged in blockchain-related development, which commercially justified the registration.

Lastly, Coinbase claimed that bitFlyer’s failure to use the trade mark for certain goods and services demonstrated an intention to use it in bad faith. However, the General Court rejected this claim, stating that, under Article 18(1) EUTMR, trade mark owners benefit from a five-year grace period after registration to begin genuine use. Consequently, the mere fact that the mark was not used immediately does not prove bad faith in itself. For these reasons, the Court upheld the partial validity of Bitflyer's registration and ordered Coinbase to pay the legal costs.

For more information on bad faith trade mark registration, and when it can indeed be established, we invite you to consult our blog post from last month which precisely covered said topic.