In a case about classic Audi cars, the CJEU has confirmed that the repair clause found in design law is not applicable to trade mark law and consequently cannot limit trade mark protection.

Summary

In Audi AG v GC (Case C‑334/22), the CJEU found that a shape, which was reminiscent of the Audi four-ring trade mark, and which was featured on a third-party replacement radiator grille for classic Audi cars, was not simply used to indicate that the grille was intended for Audi cars, but falsely indicated that the grille was made by Audi. Consequently, it was irrelevant whether the shape was technically necessary to attach a genuine Audi four-ring emblem to the grille.

Facts

The defendant sold replacement radiator grilles for classic Audi cars over the internet. The grilles contained an imprint in the shape of the Audi logo, into which a genuine Audi emblem could be inserted.

Audi brought proceedings against the defendant in Poland on the basis that it infringed Audi’s EU trade mark (“EUTM”) in its four-ring logo.

Figure 1: the EUTM

Article 14(1)(c) of Regulation 2017/1001 (the “EUTM Regulation”) states that there shall be no trade mark infringement where reference to a trade mark is necessary to indicate the intended purpose of a product or service, in particular accessories or spare parts.

Although Audi’s claim did not relate to designs, the Regional Court of Warsaw was concerned by the absence of a provision similar to the “repair clause” in trade mark law. Consequently, it referred several questions to the CJEU, the key ones summarised as below:

1. Whether the defendant could rely on Article 14(1)(c) in circumstances where it is possible and/or impossible to attach an Audi emblem to the grille without using an imprint in the same shape; and
2. Whether a trade mark included in the shape of an automotive part, and more specifically an imprint in the shape of the Audi trade mark, can be considered as a ‘badge of origin’ of that part.

CJEU ruling

Dealing with the second question first, the CJEU found that a shape used on an automotive part could constitute use as a sign under Article 9(2) of the EUTM Regulation, and that such use was liable to affect the trade mark’s ‘badge of origin’ function.

Incorporating the Audi trade mark onto the radiator grille, by virtue of the imprint, for the purpose of marketing the radiator grille was further noted to fall within the specific examples of prohibited use contained in Article 9(3) of the EUTM Regulation. This was all the more so because the imprint resembling the trade mark was clearly visible even when a genuine Audi emblem was not inserted into it.

As to whether the defendant could rely on Article 14(1)(c), the CJEU noted that it was apparent that the choice of the shape of the imprint was guided by a desire to market a radiator grille which resembled the original as closely as possible.

The CJEU distinguished this situation from one in which the trade mark is only used to indicate that the spare parts are intended for Audi cars, without actually affixing the trade mark to the part. In this case, the trade mark had rather been used to ‘reproduce as faithfully as possible a product of [Audi]’. As such, the CJEU found it irrelevant whether or not it was technically possible to attach a genuine Audi emblem without using an imprint of the same shape.

Key takeaway

This case confirms that trade mark law contains no ‘right of repair’ clause similar to design law. Under Article 110(1) of Council Regulation 06/2002 on Community designs, no Community design right can subsist in a component part of a complex product (such as a replacement radiator grille of car) used for the purpose of the repair of that complex product so as to restore its original appearance. Article 14(1)(c) of the EUTM Regulation cannot be read as trade mark law’s equivalent to this ‘right of repair’ clause.

The case will now return to the Polish courts.