ECJ in AUDI v GQ: Trade mark law does not provide for a repair clause

In the trade mark dispute between Audi AG and GQ, the ECJ ruled on spare parts for motor vehicles and on the question of how the concept of use of a sign in the course of trade is to be interpreted. May the right of the proprietor of an EU trade mark be restricted on the basis of a kind of repair clause?

Since 2017, Audi has taken legal action against GQ in order to prevent the offer to purchase replica spare parts in which the shape of certain elements partially or completely corresponded to the AUDI brand. These included replica radiator grilles with a symbol that is identical or similar to the AUDI brand. On 5 May 2020, Audi brought an action against this before the Sad Okregowy w Warszawie (Regional Court of Warsaw, Poland), the referring court, to prohibit the defendants from marketing and selling it.

The Polish court therefore sent a request for a preliminary ruling to the European Court of Justice (ECJ), asking it to clarify the concept of use of a sign in the course of trade (Article 9(2) and (3)(a) to (c) of EU Regulation 2017/1001) and the scope of a trade mark proprietor's right in the automotive sector in relation to spare parts bearing a sign identical or similar to the trade mark.

The ECJ decision C-334/22 presented here answered this question and explained to what extent the proprietor of an EU trade mark has the right to oppose the use by a third party of a sign identical or similar to the trade mark for car spare parts.

ECJ: Trade mark law does not provide for a repair clause

First, the ECJ explainded that the EU legislator did not provide for a so-called repair clause in Regulation 2017/1001 as in design law and pointed out that the scope of Article 110 of the Community Design Regulation (CDR) (which provides for a repair clause) has been clarified by the ECJ to the effect that it only imposes certain restrictions on the protection of designs and models and does not affect EU trade mark rights (see October 2015, Ford Motor Company, C-500/14, EU:C:2015:680, paragraphs 39, 41 and 42).

Consequently, the so-called repair clause could not be applied by analogy in order to pursue the objective of maintaining undistorted competition between manufacturers of motor vehicles and sellers of non-original spare parts. The right of the proprietor of an EU trade mark cannot be restricted on the basis of the repair clause.

The affixing of the sign similar to the Audi trade mark is capable of establishing the existence of a factual link between that part, which a third party imports, advertises and offers for sale, and the proprietor of the AUDI trade mark, the ECJ said. According to the ECJ, a third party who, without the consent of the proprietor of an EU trade mark, imports and offers for sale spare parts containing an element for affixing the sign which is similar to the trade mark is using a sign in the course of trade in such a way as to be liable to impair one or more of the functions of that trade mark. This is a matter for the national court to examine.

However, if the use of that trade mark is necessary, in particular as an accessory or spare part, and if it is in accordance with the usage in trade or commerce, then it is impossible for the proprietor of a trade mark to prevent a third party from using that trade mark, the ECJ added. But, it should be noted that this restriction of the trade mark proprietor does not apply if an undertaking which is not economically connected with the proprietor of the trade mark affixes a sign identical or similar to that trade mark to spare parts marketed by that undertaking and intended to be incorporated into the goods of that trade mark proprietor.

With regard to the radiator grille, the ECJ found that the trade mark proprietor - in this case AUDI AG - can prohibit the use of a sign identical or similar to that trade mark for spare parts such as the radiator grille if that sign is in the form of an element of the radiator grille intended for the affixing of the emblem representing that trade mark on that grille. The court also considers this to be the case irrespective of whether there is a technical possibility of affixing this emblem to the radiator grille without affixing the sign to it.

Awareness of the AUDI brand in Poland

The reputation of the AUDI trade mark in Poland is another aspect of the decision. The ECJ found that the AUDI trade mark is generally recognised in Poland and has a highly distinctive character.

The use of the sign which is similar or identical to the AUDI trade mark by GQ could therefore be prohibited pursuant to Art. 9 para. 2 lit. c of Regulation 2017/1001 - if the national court finds that such use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the AUDI trade mark without due cause. In this case, it is not necessary to examine whether there is a likelihood of confusion, added the ECJ, because in this context the fact that the average consumer does not recognise the radiator grilles as originals is irrelevant.

AUDI v GQ: ECJ leading principle

As a guiding principle, the ECJ held that Article 9(2) and (3)(a) to (c) of Regulation 2017/1001 must be interpreted as meaning that importing and offering for sale spare parts, such as the radiator grille for motot vehicles, containing an element which is designed for the attachment of the emblem representing that trade mark and the shape of which is identical with, or similar to, that trade mark,, is using a sign in the course of trade in a manner liable to affect one or more of the functions of that trade mark, which is a matter for the national court to ascertain.

Article 14(1) lit. c of Regulation 2017/1001 must, according to the ECJ, be interpreted as meaning that it does not preclude a car manufacturer who is the proprietor of an EU trade mark from prohibiting a third party from using a sign identical with or similar to that trade mark for spare parts for cars, namely radiator grilles, where that sign consists of the shape of an element of the radiator grille designed for the attachment thereto of the emblem representing that trade mark, regardless of whether or not there is a technical possibility of attaching that emblem to the radiator grille without affixing that sign to it.

You may also find this interesting to read:
- BGH: Technical effect of spare parts and re-manufacturing
- Audi v. Nio: Likelihood of confusion between car models
- CFI: Invalidity action against a complex built-in design

Any questions about trademark protection or the defence of a trademark?

Do you have questions about trademark protection or the defence of a trademark? We are an experienced patent law firm and will be happy to advise and assist you in all areas of trademarks, designs and patents.

Please contact us easily, you can reach us by telephone on +49 69 69 59 60-0 or by info@kollner.eu.