CJEU: Trade mark infringement by spare parts from third-party suppliers that contain elements for affixing a trade mark emblem
In its judgment of 25.01.2024 (C-334/22), the European Court of Justice (CJEU) clarified that a car manufacturer can prohibit the use of a sign for spare parts if it contains an element that is similar or identical to a trade mark.
Facts of the case
The German car manufacturer Audi is the proprietor of the well-known European Union figurative mark.
The defendant, a Polish car spare parts dealer, advertised on a website radiator grilles containing an element intended for the application of the above-mentioned Audi trademark, see photo
Audi brought an action before a Polish court with the aim of prohibiting the defendant from advertising/importing/offering radiator grilles with a sign that is identical or similar to Audi’s registered trade mark. This led the Polish court to refer the matter to the CJEU in order to clarify whether the challenged use interfered with the scope of protection of Audi’s registered EU trade mark.
The decision of the CJEU
1. Questions to be clarified
In the following proceedings, the European Court of Justice was confronted with the question of whether car manufacturers can prohibit third-party suppliers of car spare parts from affixing a sign identical or similar to their EU trade mark on spare parts, even if it is merely an element intended for affixing the brand emblem.
2. Ruling of the Court of Justice of the European Union
The CJEU initially concluded that importing and offering spare parts such as radiator grilles without the consent of the trade mark owner constituted use of the sign in the course of trade.
Furthermore, none of the legal barriers that would allow third parties to engage in such conduct were applicable. The CJEU justified this by stating that the part intended for the attachment of the Audi emblem, which is similar or identical to the trade mark, is visible to the public interested in purchasing it and could therefore constitute a factual link between the replacement part in question and the proprietor of the four rings trade mark. Therefore, the type of use is likely to impair the functions of the trade mark, such as the guarantee of origin and quality.
The Polish court is expected to rule on the pending legal dispute in light of this case law.
Implications for practice
First of all, the decision shows that it is generally possible for car manufacturers to prohibit the use of a sign for spare parts such as radiator grilles if it contains an element that is identical or similar to an earlier trade mark.
Should Audi actually prevail in the proceedings, radiator grill manufacturers are advised to maintain a significant distance from (automotive) brands when designing corresponding products in future in order to avoid brand collisions.
It also appears possible that the ruling could have an impact beyond the automotive market. For example, it seems conceivable that suppliers of replacement and accessory products will not manufacture and sell any recesses or special devices to which the manufacturer’s emblem can be attached in future out of sheer caution.
Since automobile brands are also often well-known, the scope of protection is once again considerably extended, as the protection of reputation also offers protection for goods and services that are not directly protected by the trade mark. In other words, devices where corresponding trade marks can be affixed could possibly also be successfully banned in non-automotive areas.
Conclusion
The decision of the CJEU strengthens the position of car manufacturers in legal disputes with spare parts suppliers who use their trade marks in an (un)modified manner for their own goods. While the exact interpretation and implementation by the national courts remains to be seen, third-party suppliers of spare parts should be alerted if they offer goods that are provided with elements for attaching a trade mark emblem of the original manufacturer, for example.
