BGH “Testarossa” — Federal Court of Justice Affirms BPatG Ruling That Ferrari’s Bad-Faith Challenge to “Testa Rossa” Trademark Fails Without Proof of Damaging or Obstructing Intent

Background

Ferrari S.p.A. has used the designation “Testarossa” since the late 1950s, first as the name of its 250 Testa Rossa racing car (1957) and later as a Ferrari production model from 1984 onward. In 2013, Autec AG — a German manufacturer in the toys, model-cars, and licensing sector — applied to register the word mark “Testa Rossa” (with a space, in Italian “red head”) at the German Patent and Trade Mark Office (DPMA) for a broad list of goods and services across several Nice classes.

Ferrari opposed and, after registration, sought cancellation under § 50(1) MarkenG in conjunction with § 8(2) No. 10 MarkenG (old version) on the ground that the application was made in bad faith (bösgläubig). The DPMA rejected the cancellation request. Ferrari appealed to the Federal Patent Court (BPatG), which dismissed the appeal in a leitsatz decision on 15 January 2025 (29 W (pat) 14/21). The BPatG admitted Rechtsbeschwerde (further appeal on points of law) to the BGH. The BGH dismissed Ferrari’s appeal on 11 September 2025 (I ZB 6/25), leaving the BPatG’s ruling in place as the controlling German precedent on bad-faith trademark applications targeting well-known foreign marks.

The Court’s Holding

The BPatG — affirmed by the BGH — ruled that there was no bad-faith application within the meaning of § 8(2) No. 10 MarkenG, including under the academically proposed new category of “functionally improper application” (funktionswidrige Anmeldung). The court identified three recognized categories of bad faith:

(1) Hortungsanmeldung — speculative hoarding of marks without genuine intent to use, undertaken to extract licensing or coexistence payments from later applicants;

(2) Sperrwirkung — obstructive applications targeted at disrupting a third party’s existing protected use position; and

(3) Behinderungswirkung — misuse of trademark applications as an unfair competitive instrument against an identifiable competitor.

Across all three categories the court held that bad faith requires objective, coherent indications of damaging or obstructing intent (Schädigungs- oder Behinderungsabsicht). The burden of proof rests fully on the party challenging the application — here Ferrari. Mere similarity to a famous prior mark, mere knowledge of the famous mark, and even the obvious intention to free-ride on the famous mark’s reputation are not sufficient by themselves to establish bad faith. The applicant’s pursuit of a legitimate licensing-based business model is itself not unlawful.

The court rejected the proposed expansion to a fourth category of “functionally improper applications,” concluding that such an expansion would dilute the bad-faith standard and overlap inappropriately with the dedicated protection regime for well-known marks under § 9(1) No. 3 and § 14(2) No. 3 MarkenG. Owners of well-known marks should rely on those provisions and on opposition proceedings rather than try to channel free-riding concerns through the bad-faith bar.

Key Takeaways

• The bad-faith bar to trademark registration in Germany under § 8(2) No. 10 MarkenG is narrow. Free-riding intent is not enough — there must be additional objective evidence of Schädigungs- oder Behinderungsabsicht.
• The full burden of proof rests on the party challenging the registration. Famous-mark holders cannot rely on the assumption that any applicant who knows the famous mark must be acting in bad faith.
• The court declined to recognize a new category of “functionally improper applications” — a doctrinal proposal floated in academic commentary — and so the three traditional categories (hoarding, obstruction, anti-competitive misuse) remain the exclusive analytical framework.
• Famous-mark holders should rely on the dedicated protection regime for well-known marks (§ 9(1) No. 3, § 14(2) No. 3 MarkenG) and on opposition proceedings rather than attempting to channel free-riding concerns through bad-faith bar.
• Pursuing a licensing-based business model around marks that resemble famous prior marks is not, by itself, unlawful in Germany. The boundary lies at evidence of intent to harm or obstruct the senior-rights holder.

Why It Matters

This is the most authoritative German guidance on bad-faith trademark applications since the original Markenrichtlinie was implemented. The decision sharply limits how famous-brand owners can use § 8(2) No. 10 MarkenG to clear the German register of imitative marks. Iconic marks — Ferrari, Coca-Cola, Apple — cannot prevent third-party registrations of similar marks merely because the applicant knows the famous mark or wants to leverage its halo. They have to fight on substantive trademark grounds (likelihood of confusion under § 9(1) No. 2, dilution-equivalent protection under § 9(1) No. 3) or in opposition proceedings, where the analytical framework is more rigorous and the proof requirements are more demanding.

For applicants and their counsel, the message is reassuring: a licensing-driven business model around well-known marks remains lawful in Germany, provided the application portfolio does not show patterns indicative of obstruction or anti-competitive intent. Documentary trails — legitimate use plans, licensing-business records, no targeting of identifiable competitors — insulate the applicant from § 8(2) No. 10 challenges. Famous-brand holders, conversely, should focus enforcement resources on watch services, opposition proceedings, and § 14(2) No. 3 dilution claims rather than expecting the bad-faith bar to do the work.

The BGH affirmance also resolves a circuit-split-equivalent at the BPatG level: prior chambers had taken inconsistent positions on whether the proposed “functionally improper application” category should be recognized. After September 2025 it should not be invoked.