Case C‑334/22
Audi AG
v
GQ
(Request for a preliminary ruling from the Sąd Okręgowy w Warszawie)
Judgment of the Court (Fourth Chamber) of 25 January 2024
(Reference for a preliminary ruling – EU trade mark – Regulation (EU) 2017/1001 – Article 9(2) and (3)(a) to (c) – Right conferred by an EU trade mark – Concept of ‘using in the course of trade any sign’ – Article 14(1)(c) – Limitations on the effects of an EU trade mark – Right of the proprietor of an EU trade mark to oppose the use by a third party of a sign identical with, or similar to, the trade mark for motor vehicle spare parts – Component of a radiator grille designed for the attachment of an emblem representing the trade mark of a motor vehicle manufacturer)
1. EU trade mark – Effects of an EU trade mark – Rights conferred by a trade mark – Objective of preserving undistorted competition between vehicle manufacturers and sellers of non-original spare parts – Application by analogy to an EU trade mark of the repair clause of Regulation No 6/2002 – Not included
(European Parliament and Council Regulation 2017/1001, Arts 9 and 14; Council Regulation No 6/2002, Art. 110)
(see paragraphs 25-29)
2. EU trade mark – Effects of an EU trade mark – Rights conferred by a trade mark – Right to prohibit the use of a trade mark – Concept of use – Affixing of a sign identical with, or similar to, a trade mark to radiator grilles and importation and offering for sale of those radiator grilles – Sign consisting of the shape of an element of those radiator grilles designed for the attachment thereto of the emblem representing that trade mark – Included
(European Parliament and Council Regulation 2017/1001, Art. 9(2) and (3)(a) to (c))
(see paragraphs 38-40, 49, operative part 1)
3. EU trade mark – Effects of an EU trade mark – Rights conferred by a trade mark – Right to prohibit a third party from using a sign identical with, or similar to, a trade mark on radiator grilles – Sign consisting of the shape of an element of those radiator grilles designed for the attachment thereto of the emblem representing that trade mark – Admissibility – Whether or not it is technically possible to affix that emblem to those radiator grilles without affixing that sign to them – Absence of impact
(European Parliament and Council Regulation 2017/1001, Art. 14(1)(c))
(see paragraphs 53-55, 58, 60, operative part 2)
Résumé
In the context of a reference for a preliminary ruling, the Court of Justice provides clarification of the concept of using in the course of trade any sign, where a third party imports and offers for sale spare parts for motor vehicles without the consent of the motor vehicle manufacturer which is the proprietor of an EU trade mark. In addition, the Court clarifies the scope of that manufacturer’s exclusive right to prohibit that third party from using a sign identical with, or similar to, that trade mark in respect of such spare parts.
GQ is a natural person engaged in the business of selling spare parts for motor vehicles via an internet site. As part of that business, GQ advertised and offered for sale radiator grilles that had been adapted and designed for older Audi models. Those radiator grilles included an element designed for the attachment of an emblem of the motor vehicle manufacturer Audi.
Audi, the proprietor of the figurative EU trade mark representing four overlapping circles (‘the AUDI trade mark’), brought an action before the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland), the referring court, seeking an injunction to prohibit GQ from advertising, importing, offering for sale or placing on the market non-original radiator grilles bearing a sign identical with, or similar to, the AUDI trade mark.
The referring court decided to refer a question to the Court on the interpretation of Regulation 2017/1001, (1) asking it to clarify the concept of use of a sign in the course of trade and the scope of the right of a motor vehicle manufacturer, which is the proprietor of an EU trade mark, to prohibit a third party from using a sign identical with, or similar to, that trade mark for spare parts.
Findings of the Court
First, the Court notes that the EU legislature did not provide for a so-called ‘repair’ clause, such as that which exists in design law, (2) in Regulation 2017/1001 and points out that that clause applies without prejudice to the provisions of EU law relating to trade marks.
Consequently, the so-called ‘repair’ clause cannot be applied by analogy in order to pursue the objective of preserving undistorted competition between manufacturers of motor vehicles and sellers of non-original spare parts, that objective having been taken into account by the EU legislature in the context of Regulation 2017/1001, (3) and the right conferred on the proprietor of an EU trade mark cannot be limited on the basis of that clause. (4)
Secondly, the Court observes that the referring court considers that the shape of the element of those radiator grilles designed for the attachment of the emblem representing the AUDI trade mark is identical with, or similar to, that trade mark. That shape thus constitutes a sign within the meaning of Regulation 2017/1001. (5) Furthermore, the affixing of that sign on or incorporated into those radiator grilles, for the purposes of marketing them, represents use falling within that regulation (6) and, in so far as GQ imports and offers for sale radiator grilles incorporating that sign, it may be regarded as fulfilling the types of use falling within that regulation. The fact that that element is placed on the spare part, namely the radiator grille, in such a way that the sign identical with, or similar to, the trade mark of the vehicle manufacturer is visible to the relevant public when it sees that part is such as to establish the existence of a material link between that part, which a third party imports, advertises and offers for sale, and the proprietor of the AUDI trade mark.
Accordingly, the Court holds that a third party which, without the consent of the manufacturer of motor vehicles which is the proprietor of an EU trade mark, imports and offers for sale spare parts, namely radiator grilles for those motor 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 impair one or more of the functions of that trade mark, which is a matter for the national court to determine.
Thirdly, the Court points out that the impossibility for the proprietor of a trade mark to prohibit a third party from using that trade mark where such use is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part, and is done in accordance with honest practices in industrial or commercial matters, is one of the circumstances in which the exclusive right conferred by the trade mark cannot be relied on against a third party.
The purpose of the limitation, referred to in that hypothesis, is to allow suppliers of goods or services which are complementary to goods or services offered by the proprietor of a trade mark to use that trade mark in order to inform the public, in a comprehensible and complete manner, of the intended purpose of the goods they market or of the services they offer or, in other words, of the practical link between their goods or services and those of the proprietor of the trade mark.
However, where a sign identical with, or similar to, an EU trade mark constitutes an element of a spare part for motor vehicles, which is designed for the attachment of the emblem of the manufacturer of those vehicles to it and is not used to designate or refer to goods or services as being those of the proprietor of that trade mark, but to reproduce as faithfully as possible a product of that proprietor, such use of that trade mark does not fall within the aforementioned hypothesis.
The Court therefore holds that a manufacturer of motor vehicles who is the proprietor of an EU trade mark is entitled to prohibit a third party (7) from using a sign identical with, or similar to, that trade mark in relation to spare parts for those motor vehicles, 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 that radiator grille without affixing that sign to it.