GERMANY Trends and Developments Contributed by: Thomas Nägele, Steffen Henn, Anke Hofmann and Serpil Dilbaz, SZA Schilling, Zutt & Anschütz
SZA Schilling, Zutt & Anschütz Otto-Beck-Strasse 11 D-68165 Mannheim Germany
Tel: +49 621 4257 247 Fax: +49 621 4257 286 Email: thomas.naegele@sza.de Web: www.sza.de
Trade Marks – Legal Developments Testarossa
ROSSA”. It subsequently applied for invalidation of the mark in its entirety, arguing that the respondent had filed the disputed application with knowledge of the appellant’s earlier rights with the intention i) of unfairly exploiting the reputation and notoriety of the “Testarossa” mark for his own commercial interests and ii) of hindering the continued use of the appel - lant’s earlier trade marks. According to the appellant, “Testarossa” remains world-famous and designates one of its most successful automobile models – an icon of automotive history. The relevant provisions of the German Trade Mark Act (Markengesetz or MarkenG) Section 8 – Absolute grounds for refusal: (2) The following trade marks shall not be registered […] 14. which have been applied for in bad faith. Decision of the BPatG The BPatG found no evidence that the application had been filed in bad faith. In particular, none of the recog - nised categories of bad-faith filings applied, such as speculative filings, interference with a vested right, or abuse of the trade mark’s blocking effect. A proprie - tor has five years to put a trade mark to genuine use. According to the case law of the European Court of Justice, bad faith requires, inter alia, an intention to obstruct. Mere exploitation of the reputation of the earlier “Testarossa” mark is insufficient in the absence of additional circumstances. The appellant can rely on trade mark instruments designed to prevent the likeli -
In its decision of 15 January 2025, the Federal Patent Court (BPatG) examined the criteria for assessing bad faith in trade mark applications. The facts of the case The appellant is a well-known Italian manufacturer of sports cars and Formula 1 vehicles and has used the designation “Testa Rossa” for a front-engined racing car since the 1950s. From 1984 to 1991, the appellant produced the series model “Testarossa”, followed by the “512 TR” from 1991 to 1994 and the “F 512 M” from 1994 to 1996. In total, more than 7,000 vehicles of these series were manufactured. The respondent is the CEO of a long-established company in the toy and model-car industry and has been active in this field for 50 years. In the past, the respondent filed applications for revo - cation against several “Testarossa” trade marks regis - tered in favour of the appellant. Various legal disputes between the parties concerning these actions are still pending. In addition, the respondent applied to register seven “Testa Rossa” trade marks for various goods in Class - es 3, 7, 8, 9, 12, 14, 16, 18, 21, 25 and 28, as well as for services in Class 37, before both the EUIPO and the DPMA. The appellant initially opposed the registration of the German word mark “Testa Rossa” relying on an unreg - istered earlier sign “Testa Rossa” with a priority date of 1 January 1957 and on its IR trade mark “TESTA -
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