Audi lawyer explains landmark CJEU verdict in trademark dispute over spare parts
Judges say car radiator grille with space for four-ring logo could constitute TM infringement | Decision contradicts AG opinion and could affect how spare parts manufacturers can brand products | Audi lawyer says court has clarified the ‘repair law’.
The Court of Justice for the European Union (CJEU) has delivered a “milestone” verdict in favour of Audi in its trademark dispute with a Polish manufacturer of car radiator grilles, which could affect how spare parts for cars can be branded.
Last Thursday (January 25), judges at the EU’s top court said the use of a shape similar to Audi’s four-ring logo on radiator grilles designed for older car models could amount to trademark infringement.
This stance contradicted what Advocate General Laila Medina had said on the matter in September last year—that using an automaker’s logo in such a way did not constitute the “use of a sign in the course of trade” within EU trademark law.
Paweł Siekierzyński, attorney-at-law and partner at SK+ Siekierzyński Kochlewski—which represented Audi before the CJEU in collaboration with German IP law firm Lubberger Lehment—said: “We believe this is yet another milestone CJEU verdict for the automotive industry setting guidelines for the scope of trademark protection in the EU.”
Spare parts dispute
Audi has taken legal action against the owner of a Polish website since 2017, alleging that the sale of non-original radiator grilles for older car models, which had a space carved out for the four-ring Audi logo, infringed its trademark rights.
The retailer contested those claims, telling Poland’s Regional Court in Warsaw that in practice the sale of such parts was not objected to by motor vehicle manufacturers.
That court referred the case to the CJEU to determine the application of the so-called ‘repair clause’—which is aimed at preventing manufacturers from having a monopoly over the creation of spare parts—and whether the use of Audi’s logo in this case could be regarded as a trademark fulfilling its function as an indication of origin.
Repair clause
The CJEU clarified that the ‘repair clause’—which exists in EU design law—only placed restrictions on the protection of designs and should not affect Audi’s rights in enforcing its trademark.
Siekierzyński commented: “The CJEU’s ruling makes it clear that a ‘repair’ clause such as the one existing in the law of designs in Article 110 of Regulation No 6/2002 was not provided for by the Union legislature in Regulation 2017/1001.
“We believe that now we can say that this is CJEU’s established case law in this respect and the ‘repair’ clause should not be considered by analogy in the trademark regime.”
Judges also determined that the use of the four-ring mark on a spare radiator grille “was capable of establishing the existence of a material link between that part”, offered by a third party, and the trademark owner.
Such use was therefore “liable to adversely affect one or more of the functions of the trademark”, they continued.
This was in contrast to the AG’s opinion that the “mere silhouette” of an EU trademark of the car manufacturer, as part of a reproduction of an original radiator grille with the sole technical purpose of housing the logo, should be excluded from fulfilling the functions of a trademark.
“The CJEU emphasised that the premise for the application of Article 9(2) of Regulation 2017/1001 concerning ‘use of a sign in the course of trade’ must be examined before any assessment of the existence of a likelihood of confusion within the meaning of Article 9(2)(b) of that Regulation can be made," Siekierzyński said.
“What is important from the perspective of the automotive market is that the CJEU held that affixing an element being identical with, or similar to, a third-party trademark (in this case the four-ring Audi trademark) on a spare part in such a way that such element, designed for the attachment of the emblem representing the trademark, is visible to the relevant public when it sees that [that] spare part may be considered as use of a sign in the course of trade.”
Fair use v faithful reproduction
With regards to the fair use clause, the CJEU stressed that the purpose of this exemption is to allow, under specific conditions contained within the exemption, is to identify or refer to goods or services, noted Siekierzyński.
“For this reason, the CJEU came to a conclusion that use of a sign that is identical with, or similar to, a trademark—which constitutes an element of a spare part and is designed for the attachment of the emblem of the vehicle manufacturer to that part—falls outside Article 14(1)(c) of Regulation 2017/1001," he added.
According to Siekierzyński, this is because its purpose is not to facilitate the faithful reproduction of a product of the trademark owner.
“The intention to faithfully reproduce a part may not be justified by the fair use clause, as it serves a communication, not a technical purpose.”
The case is Audi v GQ. Audi is represented by SK+ Siekierzyński Kochlewski in collaboration with the Berlin office of Lubberger Lehment.
Costs will be decided by the referring Warsaw court.
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