Using another party’s trademark for designation of spare parts – CJEU’s ruling

In its ruling of 6 October 2015, the Court of Justice of the European Union concluded the so called “repair clause” does not constitute grounds for using another party’s trademark without its owner’s consent. Under the clause it was allowed to use a protected industrial design to repair a complex product in order to restore its original appearance.

A request for a preliminary ruling was filed with the CJEU in relation to a dispute between Ford Motor Company and Wheeltrims srl. Wheeltrims manufactures and sells wheel rims, including rims that have affixed to them identical copies of trademarks of various car companies, including Ford. In May 2013 Ford requested the Court of Turin (Tribunale di Torino) forbid Wheeltrims to manufacture and sell wheel rims with the Ford trademark and that it order the company to compensate Ford for the losses incurred. The plaintiff claimed affixing the Ford trademark on wheel rims sold by Wheeltrims infringed on its exclusive right to use the trademark.

However, Wheeltrims argued their right to use the Ford trademark resulted from the “repair clause.” The clause is contained in Art. 110 of Regulation 6/2002[1], which states that protection as a community industrial design does not apply to the design which is a complex product’s component used to repair it and restore its original appearance. In turn, Art. 14 of Directive 98/71/EC[2] allows member states to maintain in force the provisions of state laws regarding the use of a design of a component which is used to repair a complex product in order to restore its original appearance .[3] These provisions were introduced to liberalize the car parts market. Wheeltrims was of the opinion the Ford trademark was affixed to wheel rims in order to restore the appearance of repaired cars, not to indicate the origin of a given part. Thus, the quoted regulations should be binding in the case at hand. Wheeltrims also believed prohibiting the use of trademarks by manufacturers of car parts on the above grounds would disturb the development of free competition on the car parts market.

In the case at hand, the Court evaluated Wheeltrims’ actions from two perspectives: the possibility of using another party’s trademark for information purposes and the possibility of using the “repair clause.” The possibility of using another party’s trademark for information purposes was provided for in Article 12 of Regulation 207/2009[4], which states that a Community trademark does not entitle its owner to prohibit a third party from using it in the course of trade, e.g. for designating the type, quality, quantity, purpose, value, geographical origin, manufacturing or service time or other properties of a product, service or the trademark itself, if it is necessary to indicate the purpose of the service and products being, in particular, accessories or spare parts. However, the Court of Turin concluded the use by Wheeltrims of the Ford trademark was not necessary to indicate to potential buyers the purpose of wheel rims or their compliance with a Ford car; hence such use constituted an infringement of Ford’s rights.

In the case at hand, the Court was in doubt as to the possibility of using the “repair clause” and, in this regard, it turned to the CJEU with a request for a preliminary ruling. The CJEU stated Article 14 of Directive 98/71/EU and Article 110 of Regulation 6/2002 does not apply in cases regarding trademarks and cannot constitute grounds for a deviation from the trademark protection provided for in Directive 2008/95[5] and Regulation 207/2009.

The CJEU also responded to Wheeltrims’ claim for the protection of free competition in the EU an exception to trademark protection has to be applied, provided for in the “repair clause.” The CJEU concluded the existing provisions regarding trademark protection, e.g. Article 12 of Regulation 207/2009, constitutes sufficient means for competition protection in the EU. Their aim is to balance the interests of the parties entitled to use a given trademark and the idea of the free flow of goods and provision of services on the shared market.

The CJEU also ruled on similar cases in its earlier judgments: BMW (C-63/97), and Gillette Company and Gillette Group Finland (C-228/03). In the former cases, the CJEU concluded that using another party’s trademark to inform about a company performing repairs or maintenance services of products with a given trademark affixed to them, or to inform that it specializes in the products of a given brand, did not infringe on the community regulations regarding trademark protection. In such cases the trademark’s owner cannot prohibit the use of such a trademark by another party, unless it is used in a manner suggesting the existence of special relations between that party and the trademark’s owner.

The latter case, Gillette Company and Gillette Group Finland, concerned LA-Laboratories, which sold safety razors and blades in Finland similar to the ones of Gillette. The information placed on the blade packages read that the blades were compatible with all Gillette Sensor safety razors. LA-Laboratories was not entitled under any agreement to use the Gillette Company’s trademarks. Gillette brought a lawsuit to the court of first instance in Helsinki, in which they claimed LA-Laboratories infringed on their rights to registered Gillette and Sensor trademarks. The CJEU concluded using another party’s trademark in this case was in accordance with community law, if in practice this was the only way to provide the recipients with clear and complete information about the purpose of the product, thus keeping free competition on the market for this product.

Also, the Community Trademarks and Industrial Designs agency of the District Court in Warsaw examined a similar case (ref. No XXII Gwzt 6/08) to the BMW case referred to above. The defendant was the owner of a company which sold used cars and provided repair services. The defendant designated its company as “T – independent BMW car servicing” or simply “BMW car servicing.” On the information board in front of the company’s premises, the defendant put the word trademark “BMW,” and on another board also the two word and figurative trademarks of BMW (logos). The Court concluded that the defendant used those trademarks without the plaintiff’s consent, in an identical form to the one that had been registered for designating goods and services and to the extent identical to the protected trademarks. Referring to the above-mentioned CJEU’s ruling in the BMW case, the court concluded that an exception from the protection given to community trademarks in Article 12c of Regulation 207/2009 did not embrace the word and figurative trademark of BMW. In the court’s opinion, there was no justification for using the word and figurative trademark without the consent of its owner, since such a trademark indicates something more than the make of the car – it indicates a particular car manufacturer, which makes buyers believe that there is a legal or commercial relationship between the owner and the entity which uses it.

To sum up, the so called “repair clause” constitutes an exception from the protection of industrial designs and is not binding in the case of using a trademark without its owner’s consent. It is possible to use another party’s trademark for the purpose of informing potential clients that a given entity specializes in products of a given brand, e.g. in the scope of repair or maintenance. However, such use of a trademark cannot suggest to the buyers that there is a special relationship between the entity using the trademark and its owner. In the case of using a logo belonging to another entity, there is a risk the court will consider such activity as possibly misleading to buyers, thus infringing on the exclusive rights of the trademark’s owner.

[1] Regulation of the Council (EC) No 6/2002 of 12 December 2001 on Community designs.

[2] Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the protection of trademarks.

[3] A reflection of these regulations in Italian law is Article 241 of the Industrial Property Code (Codice della proprietà industriale).

[4] Regulation of the Council (EC) No 207/2009 of 26 February 2009 on the Community trademark.

[5] Directive of the European Parliament and of the Council 2008/95/EC of 22 October 2008 aiming at making the legislation of EU member states regarding trademarks compatible.