Ferrari TESTAROSSA: a vintage brand but no revocation for non-use

Since 2007, Ferrari has owned the TESTAROSSA international trademark, which designates the European Union for automobiles, spare parts and accessories. Production of TESTAROSSA vehicles ceased in 1996, and the EUIPO revoked the trademark for non-use between 2010 and 2015, considering that only used cars were marketed by third parties, in particular authorized sellers. In application of the exhaustion of rights rule, a trademark owner is not required to consent to resales of a trademarked product in Europe. The Board of Appeal here considered that Ferrari had not positively demonstrated its intervention and therefore its consent to the sale of used cars by third parties.

Challenging the EUIPO’s position, Ferrari brought an action before the Court of first instance of the European Union.

In the present judgment, the Court of first instance finds that the use of the TESTAROSSA trademark is not a use made by a third party having no connection with it, but a use made by authorized sellers and distributors, with whom Ferrari has economic and contractual links. These links presuppose that the trademark owner has authorized, even if only implicitly, the said seller or authorized distributor to use its trademarks as part of its economic activities on the market.

In the market for vintage used cars, the fact that a car is sold by an authorized dealer indicates its commercial origin and reassures customers about maintenance and parts replacement. Invoices presented to buyers were marked “Ferrari Vertragshändler” or “distributeur-réparateur agréé”.

In addition, Ferrari offers a fee-based certification service attesting to the authenticity of TESTAROSSA used cars, for which the applicant for the certificate must provide precise information on the origin of each of the car’s main parts (engine, gearbox, fuel tank, etc.), as well as the history of any replacements. These certificates reassure buyers as to the commercial origin of the vehicle, and increase its value. The Court considered that this service constituted a serious use in line with case law.

The Court of first instance therefore annulled the EUIPO’s decision in its entirety, demonstrating that a trademark can retain its protection even after production of new models has ceased, as long as it continues to fulfil its function as a guarantee of origin on the second-hand market.

European Court of First Instance, July 2, 2025, T-1103/23

Invalidity of the three-dimensional trademark consisting of the shape of the Rubik’s cube

Under Article 7(1)(e)(ii) of the European Union Trademark Regulation, signs consisting exclusively of the shape or other characteristics of the product necessary to obtain a technical result are refused registration. The same ground for refusal is codified in French law in Article L.711-2 5° of the Intellectual Property Code.

On 9 July 2025, on the basis of this article, the Court of first instance of the European Union upheld the EUIPO’s decision to cancel the three-dimensional mark registered in 2012 by Spin Master Toys UK for the three-dimensional sign “Rubik’s Cube”.

The Court considered that the essential characteristics of the trademark (cube shape, 2×2 grid structure, differentiation into six basic colors) are all exclusively functional and necessary to achieve the technical result.

In particular, with regard to the colors, the Court ruled that ‘the fact that each face (and each small square) of the cube is distinguishable by six different colors constitutes an essential feature of the contested trademark that is necessary to achieve the technical result’, their function being ‘to enable each face of the cube to be distinguished by means of a contrasting effect’.

This ruling thus confirms that even seemingly aesthetic elements such as colors can be considered functional if they are necessary for the technical result. The Court reiterates here the strict limits of trademark protection for products whose shape is dictated by their function, even when they enjoy worldwide renown.

Court of first instance of the European Union, July 9, 2025, T-1173/23

Supplementary Protection Certificates (SPCs): The Paris Court of Appeal reaffirms and clarifies the eligibility criteria for protection

In its judgment of May 16, 2025, the Paris Court of Appeal restated the conditions for the grant of a Supplementary Protection Certificate (SPC), by providing a new illustration of the jurisprudential interpretation of Article 3(a) of Regulation (EC) No. 469/2009.

This case involved Janssen Pharmaceutica NV and the French Intellectual Property Office (the INPI), which had rejected Janssen Pharmaceutica NV’s application for an SPC in a decision dated August 12, 2022. The application concerned a combination of active substances, used to treat HIV, namely rilpivirine and tenofovir alafenamide.

According to the INPI, this combination did not meet the requirements of Article 3(a) of Regulation (EC) No. 469/2009, since the product (as a combination of active substances) was neither necessarily nor specifically identifiable from the content of the basic patent.

As a reminder, Article 3(a) states that: “A certificate shall be granted if, in the Member State in which the application (…) is submitted and at the date of that application: (a) the product is protected by a basic patent in force.”

Due to its imprecise wording, this provision has required several interventions of the Court of Justice of the European Union (CJEU) to clarify its scope.

In this context, and before ruling on the INPI’s refusal, the Paris Court of Appeal restated the guidelines of the European case law on the subject, referring in particular to:

TEVA (CJEU, C-121/17, July 25, 2018), which ruled that a combination of active substances may be considered protected by the patent if it necessarily falls within the scope of the invention covered by the patent, and if each active substance is specifically identifiable in light of the information disclosed by the patent;
ROYALTY PHARMA (CJEU, C-650/17, April 30, 2020), which specifies that the skilled person must be able to identify the active substance (which does not need to be individualized), in a specific manner, in light of the patent, his/her general knowledge and prior art at the date of filing or priority; or
ELI LILLY (CJEU, C-493/12, December 12, 2013), which recognizes that protection may result from a functional formula, provided that the active substance is specifically identifiable by the skilled person.

These decisions together form a coherent analytical framework based on two cumulative requirements:

the necessity of the product (as a single active substance or a combination of active substances) for the invention; and
its specific identification by the skilled person on the relevant date.

Applying these principles to the rilpivirine/tenofovir alafenamide combination, the Paris Court of Appeal first examines whether this combination necessarily falls within the scope of the invention covered by the basic patent.

Contrary to the INPI’s analysis, the Court observes that the patent description explicitly mentions that rilpivirine can be administered with other antiretroviral agents, in particular with nucleotide reverse transcriptase inhibitors, a category to which tenofovir alafenamide belongs.

The Court also notes that the combination produces a synergistic effect on HIV replication, exceeding the simple sum of the effects of each active substance taken individually. This synergy nature leads to the conclusion that the combination meets the technical objective of the patent.

Turning to the requirement of specific identifiability, the Court dismisses the INPI’s position that the mere mention of tenofovir alafenamide in an extensive list of antiretrovirals did not enable a skilled person to consider it specifically identifiable by the patent, and points out that the product (as a single active substance or a combination of active substances) does not need to be expressly individualized, as long as it is specifically identifiable at the filing or priority date, in light of the patent, general knowledge, and prior art.

In this case, several documents submitted by Janssen Pharmaceutica NV prior to the priority date clearly identified tenofovir alafenamide as an active inhibitor of HIV belonging to the class of substance covered by the patent.

The Court thus held that the length of the list was not decisive, as long as the skilled person could unambiguously recognize the active substance in the basic patent.

The Court therefore overruled the INPI’s decision and judged that the SPC’s application did meet the conditions set out in Article 3(a) of Regulation (EC) No. 469/2009.

This decision illustrates a rigorous and pragmatic interpretation of CJEU case law and confirms that the presence of a broad list of substances does not, in itself, preclude specific identifiability, provided that the product (as a single active substance or a combination of active substances) is objectively recognizable by the skilled person at the filing or priority date.

Paris Court of Appeal, May 16, 2025, No. 22/19239

Manga infrigement: technical intermediaries forced to block access to the Japscan website

The Syndicat national de l’édition (SNE), an organisation representing book publishers, has taken legal action against the main French internet service providers (Bouygues Télécom, Free, SFR, SFR Fibre and Orange) after discovering the existence of a platform illegally publishing a large number of manga and comic books in French.

Given that the site was managed from abroad and that its administrators were concealed behind technical anonymization measures, the SNE decided to summon the main electronic communications operators to appear before the Paris Court of Justice in order to put an end to the infringement of their writers’ authors’ rights.

The Paris Court of Justice, in a ruling dated July 23, 2025, handed down under the fast-track procedure, upheld the SNE request and ordered intermediaries, i.e. French internet service providers, to take all appropriate measures to block access to the website known as Japscan.

The judges first recalled, pursuant to Articles L.2132-3 of the Labour Code and L.331-1 and L.336-2 of the Intellectual Property Code, that professional unions may take legal action to defend the collective interests of the profession, and then confirmed that the copyright infringement was well characterized.

Furthermore, the judges pointed out that the website did not include the legal information required by the 2004 Law on Confidence in the Digital Economy, concluding that the website operators were aware of the illegal nature of the links posted on the disputed website, but also that this failure to include legal information made it difficult for the SNE to prosecute those responsible for the site, as it was unable to identify them.

The Court notes that Article L.336-2 of the Intellectual Property Code, which implements Article 8(3) of Directive 2001/29/EC on the harmonization of certain aspects of author’s rights and related rights, allows rights holders to obtain measures against intermediaries whose services are used to infringe author’s rights. These rules must be coordinated with Directive 2000/31/EC on electronic commerce and European case law on the liability of online intermediaries (CJEU, No. C-236/08, Google France SARL and Google v Louis Vuitton Malletier SA, 23 March 2010; CJEU No. C-324/09 L’Oréal SA 12 July 2011) balanced against respect for fundamental freedoms.

It follows that blocking measures must be proportionate. This therefore rules out any measures that would impose generalized, systematic and permanent control, or those that would undermine the very substance of the freedom of business of internet service providers.

Consequently, the Court orders intermediaries to implement, by technical means of their choice, the blocking of the identified domain names within 15 days and for a period of 18 months, while informing the SNE of the measures taken as soon as possible.

Paris Court of Justice, July 23, 2025, Case No. 25/07748

Misleading commercial practices: beware of “greenwashing” and “cleanwashing” claims

On June 4, 2025, the Commercial Court of Nanterre ruled in a dispute between NOO CORP (Joone Paris) and GREEN FAMILY (Love & Green), concerning environmental and health claims used in the marketing of baby diapers.

In 2024, SAS NOO CORP filed an injunction against SASU GREEN FAMILY, requesting the deletion of all communications using the hexagon logo and the terms “French family SME”, “carbon neutral”, “of renewable origin”, “compostable”, “0% allergen(s)”, “no endocrine disruptors” and “substance-free”. On the grounds of misleading commercial practices as provided for in articles L.121-1 and L.121-2 of the French Consumer Code, the Court partially upheld the claim.

The Court thus rejected NOO’s claims concerning the following allegations:

“French family SME”: The judges noted that GREEN FAMILY is indeed a French company and considered that this claim was not misleading.
“Compostable”: The Court rejected the claim, as no product was actually marketed. Communication about research work is not sufficient in itself to characterize a misleading practice.
Or “petrolatum-free”, “paraffin-free” and “sulfate-free”: The judges ruled that the “petrolatum-free” claims, tolerated for information purposes by the DGCCRF and the ANSM (National Agency for Medicines and Health Products Safety), did not constitute disparagement of competitors in the absence of proof from the plaintiff company.

On the other hand, the Court orders GREEN FAMILY to refrain from using the following allegations in any future dissemination or communication whatsoever, except in the event of new circumstances:

“carbon neutral”: The Court points out that the use of this claim is conditional, under article L229-68-1 of the French Environment Code, on the publication of two items of information: on the one hand, “a greenhouse gas emissions balance sheet integrating the direct and indirect emissions of the product or service” and, on the other, “the process by which the greenhouse gas emissions of the product or service are first avoided and then reduced or offset (…)“. In this case, the judges found that GREEN FAMILY had failed to provide a clear and transparent demonstration of its claimed neutrality.
“of renewable origin”: The judges relied on the guide issued by the Centre National de la Consommation, which requires that “the nature of the renewable material used and its proportion used in the finished product or packaging” be specified when making this claim. In this case, the company did not provide any such information.
In this case, the court ruled that the terms “allergen-free”, “endocrine-disruptor-free” and “paraben-free” used by GF did not meet the general recommendations of the DGCCRF and ANSM and are potentially misleading because, on the one hand, they are not defined by any official text and, on the other, they are unverifiable.

At this stage, the judgment remains subject to appeal.

Commercial Court of Nanterre, June 4, 2025, RG n° 2024F00512