Judgment of the Court of Justice of 25 January 2024, AUDI (C-334/22)
1. Facts
AUDI, the automobile manufacturer, is the owner of the European Union figurative trademark No. 000018762, reproduced below, the protection of which extends, among other products and services, to “Land, air and sea vehicles, parts of these products (included in Class 12), including motor vehicles"included in Class 12.
GQ, for its part, is a natural person who marketed, through the Internet, radiator grilles, adapted and designed for AUDI car models from the 80s and 90s. These grilles were not original, but incorporated an element whose shape allowed fixing the manufacturer's emblem and reproduced totally or partially the figurative AUDI brand.
AUDI practiced in front of Sąd Okręgowy w Warszawie (Regional Court of Warsaw, Poland) legal actions to prevent its importation and marketing, alleging infringement of its trademark rights and requesting, in addition, the destruction of the pieces seized by the authorities.
The Polish court considered it necessary to clarify: (i) whether that fixing element that reproduces the trademark constitutes a use in the course of trade likely to conflict with AUDI's prior rights; (ii) whether the use of elements intended to fix the manufacturer's emblem can be covered by the limitation of Article 14.1.c) of the EMR; and (iii) whether, given that the sign forms part of the configuration of a component of the automobile, the so-called «reparation clause" of the Regulations for Community designs and models.
2. Pronouncements
On this basis, the Court of Justice categorically rejects the possibility of applying by analogy the remedy clause provided for in Article 110 of Regulation 6/2002, intended for designs, recalling that the European Union legislator decided not to incorporate an equivalent exception in the field of trademarks. Consequently, the exclusive right of the proprietor must be assessed solely in accordance with Articles 9 and 14 of the EU Trademark Regulation.
The Court notes that the use of a sign identical or similar to a trademark in the course of trade includes, among other things, placing that sign on a product intended for sale, offering it for sale, storing it, or importing it. In this regard, the Court explains that the shape of the element on those radiator grilles intended to affix the AUDI emblem constitutes a sign within the meaning of Article 9.2 of the EU Trademark Regulation and that, therefore, its placement and integration into the radiator grilles for the purpose of marketing constitutes a use covered by Article 9.3 of the EU Trademark Regulation.
Furthermore, the Court notes that such use may impair any of the functions of the trademark, not limited to its essential function of indicating the business origin, but also the function of “to guarantee the quality of that product or service, or those of communication, investment or advertising".
Consequently, and given that there would indeed be use by GQ of the described sign, it is for the national judge to assess whether there is identity or similarity between the sign and the earlier mark, the similarity between products and, where applicable, the risk of confusion or the possible improper exploitation of the reputation of AUDI, which the referring body considers to be notoriously well known.
On the other hand, the Court rejects the claim that the use could be covered by the limitation in Article 14.1(c). It points out that GQ does not use the trademark to indicate the product's intended use, but rather reproduces the shape of the mark on the part itself to give it an appearance as close as possible to the original replacement part. It is, therefore, a reproduction of the mark, not a referential use. Consequently, the limitation is not applicable, regardless of whether or not it is technically possible to affix the emblem without reproducing the shape of the trademark.
Consequently, the Court declares that the use of a sign identical or similar to the AUDI trademark on spare parts constitutes a use in the course of trade that may be prohibited by the trademark holder and that the limitation of Article 14 of the EMR does not prevent such a prohibition in these types of cases.
3. Comment
The ruling significantly clarifies the scope of trademark protection in the spare parts sector. The issue raised did not concern the direct reproduction of a manufacturer's emblem, but rather the intended location for affixing that emblem, the shape of which inevitably resembles the trademark. The Court reaffirms that a trademark does not lose protection by being physically integrated into a spare part and that the shape of the fastening element, even if it meets functional requirements, can constitute a sign if it reproduces or sufficiently resembles the trademark.
The Court also rejects the application of the «reparation clause"as a way to limit trademark protection, recalling that Article 14 of the EU Trademark Regulation is the mechanism created by the legislator to balance the interests of the trademark holder with those of an uncounterfeited spare parts market. This conclusion rules out the possibility of transferring to the trademark field a more flexible regime intended exclusively for designs."
Regarding the interpretation of article 14.1.c) of EMRThe ruling correctly distinguishes between referential use (necessary and lawful) and the reproduction of the mark on the piece itself. This criterion reinforces the fact 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 brands and limits the sale of non-original parts that include elements likely to create a direct association with the manufacturer. It also provides a guideline for distinguishing between compatible replacement parts (protected by the referential use of the brand) and counterfeit parts, which conflict with the scope of protection of the aforementioned brands.
Lucia Palomino, Lawyer in the area of Partner Brands.
