The matter at hand
Audi is the proprietor of EU trade marks for its four-rings emblem. GQ is engaged in the sale of spare parts for motor vehicles. As part of his business, GQ traded in grilles, adapted and designed for older models of Audi motor vehicles, and offered those grilles for sale. The grilles contain an element designed for the attachment of the Audi emblem (i.e., an opens space meant to ‘host’ the four-rings emblem. Audi subsequently commenced litigation in Poland, seeking to prohibit GQ from use of these grilles
The referring court, the Sąd Okręgowy w Warszawie (Regional Court, Warsaw), raises the questions whether, in the absence in Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark of a provision equivalent to the ‘repair’ clause in Article 110(1) of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, the use of said grilles falls outside the scope of protection of article 9(2) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark and whether such grilles must be considered as referential use in the sense of Article 14(1)(c) of the latter regulation.
The judgment of the ECJ
First, the ECJ notes that a so-called ‘repair clause’ was not provided for by the EU legislature in Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (paragraph 26). Secondly, the ECJ states that the radiator grilles did not come from the proprietor of the Audi trade mark and were placed on the market without its consent (paragraph 37). Further, the sign is affixed to or incorporated into those radiator grille, for the purpose of marketing them, which represents use failing within Article 9(3) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (paragraph 39).
In this case, the placement of the emblem on the radiator grille ensures that a sign identical to or resembling the Audi trademark is visible to potential buyers seeking to repair their motor vehicles. This establishes a material link between the imported, advertised, and sold part and the proprietor of the Audi trademark (paragraph 41). The ECJ considers that such use is liable to infringe the functions of the trade mark, more specifically of guaranteeing the quality of those goods and those of communication, investment and advertising (paragraphs 41 and 42), and concludes that it can therefore entail trademark infringement in the sense of article 9(2) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.
Then, regarding referential use in the sense of Article 14(1)(c) Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, the ECJ states that the contested sign is used to reproduce as faithfully as possible a product of Audi, rather than to designate or refer to goods or services as being those of Audi. Therefore, such use of that trade mark does not fall within Article 14(1)(c) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (paragraph 58). It considers that, “in those circumstances, it is irrelevant whether or not there is a technical possibility of attaching the emblem representing the trade mark of the motor vehicle manufacturer to the radiator grille without the shape of the element of the radiator grille designed for that attachment constituting a sign identical with, or similar to, the trade mark” (paragraph 59).