Judgment of the Court of Justice of January 25, 2024, AUDI (C-334/22)
1. Facts
AUDI, an automobile manufacturer, is the owner of European Union figurative trademark No. 000018762, reproduced below, whose protection extends, among other goods and services, to“land, air, and water vehicles, parts of these products (included in Class 12), including automobile engines”included in Class 12.
GQ, for his part, is an individual who sold, via the Internet, radiator grilles adapted and designed for AUDI car models from the 1980s and 1990s. These grilles were not original, but they incorporated an element whose shape allowed the manufacturer’s emblem to be attached and which reproduced, in whole or in part, the AUDI figurative mark.
AUDI filed a lawsuit with theSądOkręgowy w Warszawie (Regional Court in Warsaw, Poland) to prevent the importation and sale of the products, alleging infringement of its trademark rights and also requesting the destruction of the parts seized by the authorities.
The Polish court deemed it necessary to clarify: (i) whether that fastening element, which reproduces the trademark, constitutes use in the course of trade that could conflict with AUDI’s prior rights; (ii) whether the use of elements intended to secure the manufacturer’s emblem may be covered by the exception set forth in Article 14(1)(c) of the EUTM Regulation; and (iii) whether, given that the sign forms part of the configuration of an automobile component, the so-called“repair clause”of the Community Design Regulation could be applied by analogy.
2. Statements
On this basis, the Court of Justice categorically rules out the possibility of applying by analogy the remedy clause set forth in Article 110 of Regulation No. 6/2002, which applies to designs, noting that the European Union legislature chose not to include an equivalent exception in the field of trademarks. Consequently, the proprietor’s exclusive right must be assessed solely in accordance with Articles 9 and 14 of the EU Trade Mark Regulation.
The Court notes that the use of a sign that is identical or similar to the trademark in the course of trade includes, among other things, affixing that sign to a product intended for sale, offering it for sale, storing it, or importing it. In this regard, the Court states that the shape of the element of those radiator grilles intended to secure the AUDI emblem constitutes a sign within the meaning of Article 9(2) of the EUTM Regulation and that, therefore, its affixing and integration into the radiator grilles, with a view to marketing, constitutes use within the meaning of Article 9(3) of the EUTM Regulation.
Furthermore, the Court notes that such use may undermine any of the functions of the trademark, not limited to its essential function of indicating the source of the business, but also including the function of“guaranteeing the quality of that product or service, or those of communication, investment, or advertising.”
Consequently, and given that the GQ would, in fact, be using the described sign, it is up to the national court to assess whether the sign is identical or similar to the earlier trademark, the similarity between the goods, and, if applicable, the likelihood of confusion or the possible unfair exploitation of the reputation of AUDI, which the referring court considers to be well known.
On the other hand, the Court rejects the argument that the use could be covered by the limitation set forth in Article 14.1.c). It notes that GQ does not use the trademark to indicate the product’s intended use, but rather reproduces the shape of the sign on the part itself to give it an appearance as close as possible to that of the original replacement part. It is, therefore, a reproduction of the sign, not a referential use. Consequently, the limitation does not apply, regardless of whether or not it is technically possible to affix the emblem without reproducing the shape of the trademark.
Consequently, the Court holds that the use of a sign that is identical or similar to the AUDI trademark on replacement parts constitutes use in the course of trade that may be prohibited by the trademark owner, and that the limitation set forth in Article 14 of the EU Trademark Regulation does not preclude such a prohibition in cases of this kind.
3. Comment
The ruling significantly clarifies the scope of trademark protection in the spare parts sector. The issue at hand did not concern the direct reproduction of a manufacturer’s emblem, but rather the location intended for affixing that emblem, the shape of which inevitably outlines the trademark. The Court reaffirms that the trademark does not lose protection simply because it is physically integrated into a replacement part and that the shape of the fastening element, even if it meets functional requirements, may constitute a sign if it reproduces or sufficiently resembles the trademark.
The Court also rejects the application of the“repair clause”as a means of limiting trademark protection, noting that Article 14 of the EU Trademark Regulation is the mechanism established by the legislature to balance the interests of the trademark owner with those of an undistorted spare parts market. This conclusion rules out the possibility of extending to the trademark sphere a more flexible regime intended exclusively for designs.
With regard to the interpretation of Article 14.1.c) of the EU Trade Mark Regulation, the ruling correctly distinguishes between referential use (which is necessary and lawful) and the reproduction of the mark on the product itself. This criterion reinforces the principle that the limitation cannot be used to legitimize imitations that seek to replicate the appearance of the original product.
In conclusion, the ruling strengthens the protection of automotive trademarks and restricts the sale of non-genuine parts that include elements likely to create a direct association with the manufacturer. It also provides guidance on distinguishing between compatible replacement parts (protected by the referential use of the trademark) and imitative replacement parts, which conflict with the scope of protection of prior trademarks.
Lucía Palomino, Attorney in the Trademark Practice Group.