ECJ: 'repair clause' under design law is no defence against trademark infringement

European Union

In Ford Motor Co v Wheeltrims srl (Case C-500/14, order of October 6 2015), the Court of Justice of the European Union (ECJ), considering the use of trademarks on replacement parts for automobiles, has held that design law does not authorise trademark infringement.

Wheeltrims, a provider of replacement parts for automobiles, sells wheel caps that replicate the original manufacturers’ caps, applying the manufacturers’ trademarks on some of them. Ford Motor Co brought a trademark infringement action in Italy against Wheeltrims, which raised the ‘repair clause’ defence under Community design law.

Under that clause (Article 110 of the Community Designs Regulation (6/2002), as implemented in Italian design law according to the ‘freeze-plus’ solution under Article 14 of Directive 98/71/EC on the legal protection of designs), design law does not prevent the use of a product protected by a design right for the purpose of the repair of a complex product so as to restore its original appearance. As some courts in Italy had considered that the ‘repair clause’ defence permitted the use of the original manufacturer’s trademark, the first instance court in Torino decided to refer the following questions to the ECJ:

Is it compatible with [EU] law to interpret Article 14 of Directive 98/71 and Article 110 of Regulation 6/2002 as conferring on producers of replacement parts and accessories the right to use trademarks registered by third parties in order to allow the end purchaser to restore the original appearance of a complex product, even when the proprietor of the trademark applies the distinctive sign in question to a replacement part or accessory intended to be mounted on the complex product in such a way that it is externally visible and thus contributes to the external appearance of the complex product?

Is the repair clause set out in Article 14 of Directive 98/71 and Article 110 of Regulation 6/2002 to be interpreted as constituting a subjective right for third-party producers of replacement parts and accessories and, if so, does that subjective right include the right for such third parties to use the trademark registered by another party in respect of replacement parts and accessories, by way of derogation from the rules laid down in Regulation 207/2009 and Directive 89/104, even when the proprietor of the trademark also applies the distinctive sign in question to a replacement part or accessory intended to be mounted on the complex product in such a way that it is externally visible and thus contributes to the external appearance of the complex product?

The ECJ answered the questions, by order rather than judgment (ie, without oral hearing and without an opinion by an advocate general), as follows:

Article 14 of [Directive 98/71/EC] and Article 110 of [Regulation 6/2002] must be interpreted as meaning that they do not authorise, by way of derogation from the provisions of [Directive 2008/95/EC] and of [Regulation 207/2009], the producer of vehicle replacement parts and accessories such as wheel caps to apply on its goods a sign which is identical to a trademark registered by a vehicle manufacturer for such goods, among others, without the latter’s authorisation, under the argument that such use of the mark is the only way to repair the vehicle at issue and to restore a complex product’s original appearance.”

It took the court less than a year to decide the case. The decision was by order, rather than by judgment, which is authorised under Article 99 of the Court’s Rules of Procedure “where the answer to the question referred (…) admits of no reasonable doubt”, among other circumstances. This procedure requires a proposal from the rapporteur and a hearing of the advocate general. In the present case, the rapporteur was Judge Ilešič, the president of the court’s Third Chamber, who has been a judge at the court since 2004 and has been rapporteur in most of the court’s landmark trademark cases in recent years.

The referring court considered that, under trademark law, the use of the original manufacturer’s trademark for wheel caps was not authorised, as the use did not fall within the exceptions or limitations provided for by trademark law (Article 6(1) of the Community Trademarks Directive (2008/95) and Article 12(c) of the Community Trademarks Regulation (207/2009)).

Nevertheless, as Italian court decisions had applied, by analogy, the ‘repair clause’ exception under design law to alleged trademark infringement where replacement parts and accessories were concerned, the ECJ was asked to provide an answer to the difficulties faced by the referring court. The ECJ saw no such difficulty, and gave a simple and straightforward answer:

  • Trademark exceptions must be judged under trademark law, and trademark law only.

  • The repair of a vehicle does not authorise the use of the original manufacturer’s trademark on the replacement part or accessory, even if the part is meant to restore the original appearance of a complex product.

The answer of the ECJ is sufficiently broad to apply to any and all replacement or spare part situations where design infringement could be claimed. The alleged infringer will have to prove that its activity falls within the trademark limitations if it wishes to use the trademarks of the original manufacturer. Under these limitations, the use of the mark must be necessary and not unfair under the circumstances. The referring court found that this was not the case here.

It appears that no design infringement was involved in the present case. Had this been a design infringement case, the question would have been whether a wheel cap or trim is a replacement part for which the repair clause might be invoked. However, there appears to be almost uniform case law in Europe whereby such products, which are the same as the wheels themselves, do not belong to the category of products for which the repair clause is applicable.

Alexander von Mühlendahl, BARDEHLE PAGENBERG, Munich

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