Article 14(1)(c) of Directive 2015/2436 provides a limitation to the rights of trade mark proprietors, allowing third parties to make use of another party’s trade mark where it is necessary to identify or refer to the goods of the trade mark proprietor, in particular, where necessary to indicate the intended purpose of the third party’s product or service, such as accessories or spare parts.

The referential use limitation is one of the trade mark rights limitations that often flies under the radar of trademark owners - that is, until it is invoked in court. In a way, the limitation comes naturally, as it seems unreasonable that trade mark rights would extend so far as to prohibit any mere reference to the registered sign in relation to the goods of the trade mark owner. Nevertheless, the distinction between what constitutes a legitimate reference to the goods or services of the trade mark owner and an infringement of trade mark rights may seem ambiguous in practice.

This article takes stock of the recent case law of the CJEU following amendments to the wording of the referential use limitation in EU law. This case law has brought some clarity to the related legal questions, albeit with significant caveats. 

The evolution of the relevant provisions of the trade mark directives is shown below.

The Old EUTMD treated the indication of intended purpose as the sole justification for applying the referential use limitation. The New EUTMD treats it as merely one example. Importantly, the requirement that any use must align with honest practices in commercial and industrial matters remains intact.

How many referential use-related questions can be tackled within one month?

While the question might sound like a setup for a lawyer-themed joke, the answer is - many. In January 2024, the CJEU handed down its judgments in Case C-361/22, Industria de Diseño Textil SA v Buongiorno Myalert SA and Case C-334/22, Audi AG v GQ in which it confirmed that the amended wording of the referential use limitation is, indeed, wider — but with caveats.

Inditex v Buongiorno – Confirming the amended scope of the referential use limitation is wider

In a dispute before the Spanish courts, Inditex, the proprietor of a number of trade marks containing the element “ZARA", raised trade mark claims against Buongiorno, a provider of, among other things, a multimedia messaging service marketed under the name “Club Blinko”. Buongiorno attracted potential customers by organising a prize draw in connection with its service. New subscribers had the opportunity to enter the prize draw, where one of the prizes was a ZARA gift card worth EUR 1,000. After clicking on a banner to access the prize draw, the user was presented with the “ZARA” sign in a rectangle, reminiscent of the design of gift cards.

Inditex sued Buongiorno in the Spanish courts, claiming trade mark infringement. The Spanish courts dismissed Inditex’s claims. The Spanish Supreme Court made a request to the CJEU for a preliminary ruling on the scope of the referential use limitation in light of the amended wording of the trade mark directive. The main underlying question before the CJEU was, in simplified terms, whether the new provision was wider in scope than its predecessor.

The CJEU answered affirmatively. It concluded that use of a trade mark where necessary to indicate the intended purpose of a product or service (which formed the sole basis of Article 6(1)(c) of the Old EUTMD) now constitutes only one of the situations of lawful use which the trade mark proprietor cannot oppose use of their trade mark under Article 14(1)(c) of the New EUTMD. The decision confirms that the change in wording was not merely technical. It substantively broadened the ambit of potentially relevant acts that can be subsumed under the umbrella of the referential use limitation.

That said, the widened scope of the limitation is not unlimited, and it cannot be applied as such. The CJEU reiterated the requirement of acting “in accordance with honest practices in industrial and commercial matters” as the ultimate gatekeeper for any application of the limitation in practice.

When the case arrived back to the Spanish Supreme Court, it issued a new judgment in favor of Inditex, rescinding the prior decisions. The court held that the limitation could not apply to the circumstances ascertained in the case. Despite that, the CJEU’s ruling remains substantial in confirming that the amended provision does indeed provide for a wider limitation of the trade mark owner’s rights and is not merely a technical amendment of wording. 

Audi AG v GQ - Conditions still apply

A mere two weeks after handing down its decision in the Inditex case, the CJEU delivered yet another significant decision dealing with referential use of trade marks. In this case, the CJEU held that the wider scope of the referential use limitation does not permit unlimited reliance on the exception, reiterating the importance of compliance with the requirement of honest practices in industrial and commercial matters.

In the original dispute, GQ, a Polish national, advertised and sold aftermarket grilles for older Audi models. The grilles incorporated a recess in the shape of the well-known four-rings Audi logo. The reason for including this Audi-shaped recess, as stated by GQ, was so that the end user could affix an original Audi emblem to it. No separate Audi emblem was supplied with the grille; only the shape embedded into the grille was present. The Warsaw court referred questions to the CJEU  concerning (i) whether the importation and offer for sale of the spare parts in question by a third party constituted use of the sign and (ii) whether such use would constitute referential use, therefore preventing the trade mark owner from prohibiting such acts on the basis of its trademark rights.

First, the CJEU concluded that a third party who, without the consent of the trade mark owner, imports and offers for sale spare parts containing an element designed for the attachment of an emblem representing a trade mark, in a shape identical with or similar to that trade mark, makes use of the sign within the meaning of Article 9(2) of the EUTMR.

As regards the potential application of the referential use limitation, the CJEU distinguished the situation at hand from the use of a trade mark by a third party to indicate spare parts are intended to be incorporated into the goods of the trade mark owner.

While such a scenario would fall within the scope of the limitation, the situation at hand did not. In the present case, the inclusion of the well-known Audi logo recess in the grille was guided by the desire to market a radiator grille resembling, as closely as possible, the original component.  In other words, the motivation to produce a spare part which mirrors the original part is no justification to make use of a third party’s trade mark. 

So, is the line between infringement and referential use clear after the CJEU decisions?

While the landscape is certainly not crystal clear, it is, at least, somewhat clearer in several aspects. The Inditex case confirms that the regime under the amended wording of the referential use limitation in the New EUTMD provides for a wider limitation of the trade mark owner’s rights than its legal predecessor. The Audi decision can be viewed as curbing the enthusiasm of those who were overly optimistic that the new referential use limitation’s wording would operate as a blank cheque for any seemingly referential use. In practice, it also became clear that using a trade mark with the motivation of making a spare part as similar as possible to the original is in itself insufficient to satisfy the conditions for the application of the referential use limitation.

That said, the above mentioned CJEU decisions do not render the line between infringement and reliance on the limitation entirely clear. Apart from the open-ended limitation itself, the ultimate gatekeeper - the requirement of compliance with honest practices in commercial matters - also remains subject to interpretation, as evidenced by the substantial and often complex body of CJEU case law on this referential use limit.

Importantly, both cases affirm that before relying on the referential use limitation, special attention should be devoted to analysing whether the intended referential use of a sign is detrimental to the essential functions of a trade mark.