The matter at hand
In a matter concerning the unauthorised manufacture of replacement parts (in this case wheel covers) bearing the trade mark of the original manufacturer, Ford Motor Company, the District Court in Turin, Italy, raised the question of whether the so-called "repair clause" of Article 110 of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs and Article 14 of the Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs allows manufacturers of replacement parts to apply the trade mark of the original manufacturer to the replacement parts “in order to allow the end purchaser to restore the original appearance of a complex product and, therefore, also when the proprietor of the trade mark 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”.
Article 14 of the Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs is a transitional provision which states that “Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalize the market for such parts.” In this regard, Italian law provides that exclusive rights to components of a complex product may not be invoked in order to prevent the sale of such components for the purpose of the repair of that complex product so as to restore its original appearance. This rule is similar to Article 110(1) of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs, except that the latter does not apply to ‘exclusive rights’ to component parts in general, but to Community design rights only.
Arguing that the sole purpose of the application of the trade mark to the replacement wheel covers was to restore the original appearance of the car as a whole, the spare part manufacturer in question, Wheeltrims, contended that the undistorted competition which European law seeks to establish requires that Article 110(1) of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs is interpreted as constituting a subjective right for third-party producers of replacement parts to apply the trade mark of the original manufacturer to the replacement part.
The judgment of the ECJ
The ECJ first of all establishes that Article 14 of the Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs and Article 110 of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs provide for an exception to the protection of designs only, without referring in any way to the protection of trade marks (paragraph 39), and that both the Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs and the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs explicitly state that the provisions contained therein shall be without prejudice to any provisions of Community law or of the law of the Member State relating to trade marks (paragraph 41).
As to Wheeltrims’ assertion that the objective of undistorted competition pursued by European law requires the principle of Article 110(1) of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs to be applied to trade marks as well, the ECJ notes that the EU legislator has already taken that objective into account in the context of the Trade Mark Directive and the Trade Mark Regulation: “By limiting the effects of the rights which a trade mark owner derives from Article 5 of the Trade Mark Directive, or, where it concerns a Community Trade Mark, Article 9 of the Trade Mark Regulation, Article 6 of that Directive and Article 12 of that Regulation seek to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain (…)” (paragraph 43).
In addition, the ECJ holds that - according to settled case law - Articles 5 to 7 of the Trade Mark Directive establish a full harmonisation of the rules relating to trade mark rights and accordingly define the rights of proprietors of trade marks in the Union: “Save for the specific cases governed by Article 8 et seq. of that [Trade Mark] directive, a national court may not, in a dispute relating to the exercise of the exclusive right conferred by a trade mark, limit that exclusive right in a manner which exceeds the limitations arising from Articles 5 to 7 (…)” (paragraph 44).
As a result, the ECJ concludes that Article 14 of the Design DirectiveDirective 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs and Article 110 of the Design RegulationCouncil Regulation [EC] No 6/2002 of 12 December 2001 on Community designs do not allow manufacturers of replacement parts to apply the trade mark of the original manufacturer to the replacement parts they sell to end purchasers (paragraph 45).