Industrial property, European Union trademark, Motor vehicle manufacturer, Product as an accessory or spare part, Use of an identical or similar sign, Judgment of the Court of Justice of the European Union in case C-344/22
Passim and summary
So-called “reparation” clause
Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark.
A sign protected as a European Union trade mark may also, in certain circumstances, be protected as a Community design.
The so-called “reparation” clause, provided for by regulation no. 6/2002 of the Council of 12 December 2001 on community designs, introduces certain limitations to the protection conferred by designs or models.
A motor vehicle manufacturer may prohibit the use of a sign identical or similar to the trademark it owns for spare parts.
This is the case where the spare part includes an element designed for fixing the emblem of that manufacturer and whose shape is similar or identical to that brand.
The Court leaves it to the national court to verify, on the one hand, whether the element of the radiator grill in question is identical or similar to the car manufacturer’s brand and, on the other hand, whether the radiator grill is identical or similar to one or more products for which this trademark is registered. However, if the national judge deems that the car manufacturer’s trademark is well-known in the Union, its owner will have to benefit, under certain conditions, from enhanced protection.
In this case, it matters little whether the radiator grills in question and the products for which the trade mark is registered are identical, similar or different.
The Court also confirms that, where the choice of the shape of the element designed for fixing the emblem of the motor vehicle manufacturer is guided by the desire to market a radiator grill which resembles the original radiator grill as faithfully as possible, Union law does not limit the exclusive right of that trade mark owner to prohibit the use in commerce of an identical or similar sign.
The so-called “reparation” clause, provided for by regulation no. 6/2002 of the Council of 12 December 2001 on community designs, introduces certain limitations to the protection conferred by designs or models.
However, according to the Court, this clause is without prejudice to the provisions of Union law relating to trade marks and does not contain any derogation from Union law on trade marks.
This hypothesis cannot, in particular, be assimilated to the use of the trademark to distinguish the destination of a product as an accessory or spare part.
Luxembourg, 25 January 2024
Source Curia
