Top European court sides with Audi in spare parts trademark case

Car manufacturer successfully argued that online seller of radiator grilles for old Audi models infringed its trademark

The Court of Justice of the European Union (CJEU) has found that selling replacement car radiator grilles adapted to fit the Audi logo infringes the car maker’s figurative EU trademark (EUTM), in a decision that “will be well-received by automotive manufacturers in their efforts to stop unofficial spare parts”, according to IP specialists.

A Polish trader had advertised car radiator grilles online adapted for old Audi car models from the 1980s and 1990s. Those grilles contain a carved pit shape similar or identical in shape to Audi’s EUTM of four interlocking rings registered for vehicles, spare parts and automotive accessories; the grilles were designed to hold the Audi emblem.

The CJEU has now found that using an element whose shape “is similar or identical” to the trademark is “using a sign in the course of trade in a manner liable to affect one or more of the functions of that trademark, which is a matter for the national court to ascertain”.

The court noted that the radiator grilles did not come from Audi and were placed on the market without its consent. However, the element designed for the attachment of the Audi emblem is incorporated into them for the purposes of the marketing of the radiator grilles by the third party.

It is visible to the public wishing to purchase such a spare part. A statement from the court said that this “could constitute a material link between the spare part in question and the proprietor of the Audi trademark. Consequently, such use is liable to infringe the functions of the trademark, which consist in particular in guaranteeing the origin or quality of the goods.”

Helen Wakerley, a partner at London-based IP firm Reddie & Grose, and Alex Sutcliffe, a technical assistant, noted that the finding of trademark infringement goes against the opinion of the CJEU’s advocate general last year. 

They continued that the defendant argued that the moulding was simply indicating that these parts were intended for Audi vehicles, as such referencing the vehicle’s marque. That was also rejected by the court. “It was held that the article in question had, in its design, gone further than simply indicating the suitability for use with that vehicle,” they said. 

The “repair clause” for spare parts in Community design regulation was also used by the defendant. It stipulates that it is not an infringement for a third party to reproduce spare parts for the purposes of repairing a complex product to its original appearance.

However, the CJEU found that the repair clause does not apply here in respect of designs and constitutes, under EU law, “use of a sign in the course of trade” liable to impair the function of the Audi trademark.

Eddie Powell, a partner and IP expert at UK law firm Fladgate, warned that rejecting the repair clause for trademarks “is probably correct from a trademark law perspective, but if brands do aggressively use branding features to restrict competition from spare parts providers, this could attract competition law complaints and cases against brands”.

The case was referred to the CJEU from a Warsaw court and the European court said that it would leave it to the national court to determine whether the element of the radiator grille is identical to or similar to the Audi trademark and secondly whether the radiator grille is identical to or similar to one or more of the goods in respect of which that trademark is registered.

Reading between the lines, said Powell, “one wonders if the spare part supplier was doing more than it needed to allow the Audi logo to be fitted to their radiator grille”.

The court did say that the space for the logo itself reproduced the overall shape of the four rings, he noted.

Powell continued that the decision does “open the door for brands of all types (not just automotive) to design logo-specific shapes into those component parts that are visible and might be replaced; spare parts manufacturers will effectively be forced to supply logo-less items that will be less attractive to consumers”.

Reddie & Grose’s Wakerley and Sutcliffe agreed that the outcome of the case will be well-received by automotive manufacturers in their efforts to stop unofficial spare parts. 

They continued: “Audi benefit from the fact that the outline of their rings logo is distinctive, and not a common circle or oval. The case is back with the authorities in Warsaw to determine whether there is use of an infringing sign.”

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