Ha fatto il giro dei siti di informazione giuridica di settore al decisione Trib UE 2 luglio 2025, T-11033/25, Ferrari spa c. EUIPO, interv. Hesse , chiarendo aspetti di notevole importanza pratica:
<<30 According to the case-law, the resale, as such, of a second-hand product bearing a trade mark does not mean that that mark is being put to ‘use’ within the meaning of Article 51(1)(a) of Regulation No 207/2009. That mark was used when it was affixed by its proprietor to the new product when that product was first put on the market. However, if the proprietor of the trade mark concerned actually uses that mark, in accordance with its essential function which is to guarantee the identity of the origin of the goods for which it was registered, when reselling second-hand goods, such use is capable of constituting ‘genuine use’ of that mark within the meaning of Article 51(1)(a) of Regulation No 207/2009 (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraphs 55 and 56).
31 Article 13(1) of Regulation No 207/2009, which concerns the exhaustion of the rights conferred by a trade mark, confirms that interpretation. According to that provision, a trade mark does not entitle the proprietor to prohibit its use in relation to goods which have already been put on the market in the European Union under that trade mark by the proprietor or with its consent. It follows that a trade mark is capable of being put to use in respect of goods already put on the market under that trade mark. The fact that the proprietor of the trade mark cannot prohibit third parties from using its trade mark in respect of goods already put on the market under that mark does not mean that it cannot use it itself in respect of such goods (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraphs 58 and 59).
32 In addition, under Article 15(2) of Regulation No 207/2009, use of the trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Therefore, as the Board of Appeal correctly pointed out in paragraph 76 of the contested decision, the conclusion set out in paragraph 31 above also applies to use of the mark by third parties with the consent of the proprietor, which, moreover, the parties do not dispute. Consequently, it remains open to the proprietor of the trade mark to show that it has been put to genuine use in respect of second-hand goods sold under that mark by third parties with its consent>>.
Inoltre:
<<97 The Court of Justice has held that the use, by or with the consent of its proprietor, of a registered trade mark in respect of replacement parts forming an integral part of the goods covered by that mark is capable of constituting ‘genuine use’, within the meaning of Article 51(1)(a) of Regulation No 207/2009, not only for the replacement parts themselves but also for the goods covered by that mark. It is irrelevant in that regard that the registration of that mark covers not only entire goods but also replacement parts thereof (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 35).
98 Accordingly, a trade mark registered in respect of a category of goods and replacement parts thereof must be regarded as having been put to ‘genuine use’, within the meaning of Article 51(1)(a) of Regulation No 207/2009, in connection with all the goods in that category and the replacement parts thereof, if it has been so used only in respect of some of those goods, such as high-priced luxury sports cars, or only in respect of replacement parts or accessories of some of those goods, unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered (see, to that effect, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 53).
99 The Board of Appeal must therefore assess in a concrete manner – primarily in relation to the goods or services for which the proprietor of a mark has furnished proof of use of its mark – whether those goods or services constitute an independent subcategory in relation to the goods and services falling within the class of goods or services concerned, so as to link the goods or services for which genuine use of the mark has been proved to the category of goods or services covered by the registration of that trade mark (see, to that effect and by analogy, judgment of 22 October 2020, Ferrari, C‑720/18 and C‑721/18, EU:C:2020:854, paragraph 41 and the case-law cited)>>.
Si noti che il Trib. invoca precedenti europei sempre coinvolgenti la Casa di Maranello.