Must Article 14(1)(c) of Regulation [2017/1001] be interpreted as precluding the trade mark proprietor [or] court from prohibiting a third party from using in the course of trade a sign which is identical or confusingly similar to an EU trade mark, in relation to automotive spare parts (radiator grilles) where that sign constitutes a mounting element for an automotive accessory (an emblem reflecting the EU trade mark), and: – where it is technically possible to affix the original emblem reflecting the EU trade mark to an automotive spare part (radiator grille) without reproducing on that part a sign identical or confusingly similar to the EU trade mark; or in a situation – where it is technically impossible to affix the original emblem reproducing the EU trade mark to an automotive spare part (radiator grille) without reproducing on that part a sign identical or confusingly similar to the EU trade mark?

Article 14(1)(c) of Regulation 2017/1001 does not preclude the manufacturer of motor vehicles which is the proprietor of an EU trade mark from prohibiting a third party from using a sign identical with, or similar to, that trade mark in relation to spare parts for those motor vehicles, regardless of whether or not there is a technical possibility of attaching that emblem to the radiator grille without affixing that sign to it.

What evaluation criteria should be used in such cases to determine whether the use of an EU trade mark is consistent with honest practices in industrial and commercial matters?

Given the answer to the first question, there is no need to answer the second question.

Must Article 9(2) and Article 9(3)(a) of Regulation [2017/1001] be interpreted as meaning that, where the trade mark is included in the shape of an automotive part and in the absence in Regulation 2017/1001 of a clause that would be similar to the repairs clause in Article 110(1) of Regulation [No 6/2002], the trade mark does not fulfil a designation function in that situation?

Article 9(2) and (3)(a) to (c) of Regulation 2017/1001 must be interpreted as meaning that a third party who imports and offers for sale spare parts containing an element designed for the attachment of the emblem representing that trade mark makes use of a sign in the course of trade in a manner liable to affect one or more of the functions of that trade mark.

Must Article 9(2) and Article 9(3)(a) of Regulation [2017/1001] be interpreted as meaning that, where the mounting element for a trade mark, which reflects the shape of the trade mark or is confusingly similar to it, is included in the shape of an automotive part and in the absence in Regulation 2017/1001 of a clause that would be similar to the repairs clause in Article 110(1) of Regulation [No 6/2002], that mounting element cannot be regarded as a trade mark with a designation function even if it is identical to the trade mark or confusingly similar to it?

Article 9(2) and (3)(a) to (c) of Regulation 2017/1001 must be interpreted as meaning that a third party who imports and offers for sale spare parts containing an element designed for the attachment of the emblem representing that trade mark makes use of a sign in the course of trade in a manner liable to affect one or more of the functions of that trade mark.

Third parties cannot use identical/similar trade marks on spare parts without affecting the trade mark's functions.

European Court of Justice (Fourth Chamber) · 25 januari 2024 · Judgment · Preliminary ruling

(Reference for a preliminary ruling – EU trade mark – Regulation (EU) 2017/1001 – Article 9(2) and (3)(a) to (c) – Rights conferred by an EU trade mark – Concept of ‘using in the course of trade any sign’ – Article 14(1)(c) – Limitations of 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)

Rechtsvraag

Whether a third party can use a sign identical with, or similar to, an EU trade mark on spare parts for motor vehicles, specifically radiator grilles, without the consent of the trade mark proprietor, and whether such use is consistent with honest practices in industrial and commercial matters.

Regel

Art. 9(2) and (3)(a) to (c), Regulation (EU) 2017/1001 (EU Trade Mark Regulation): Confers exclusive rights to the proprietor of an EU trade mark to prevent third parties from using identical or similar signs in the course of trade if it affects the functions of the trade mark.
Art. 14(1)(c), Regulation (EU) 2017/1001 (EU Trade Mark Regulation): Limits the effects of an EU trade mark, allowing third parties to use the trade mark to identify or refer to goods or services as those of the proprietor, particularly when necessary to indicate the intended purpose of a product or service, such as accessories or spare parts.

Conclusie

The Court concluded that a third party, such as GQ, who imports and offers for sale spare parts (radiator grilles) containing an element designed for the attachment of an emblem representing an EU trade mark (AUDI), is using a sign in the course of trade in a manner liable to affect the functions of the trade mark. Additionally, Article 14(1)(c) of Regulation 2017/1001 does not preclude the trade mark proprietor (Audi) from prohibiting such use, as it exceeds the referential use allowed under the regulation.

Tijdlijn

2017 Audi AG begins taking legal action against GQ to prevent the sale of non-original spare parts that represent the AUDI brand in whole or in part.
05-05-2020 Audi AG brings an application before the Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) seeking 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.
25-02-2022 The Sąd Okręgowy w Warszawie (Regional Court, Warsaw, Poland) decides to refer a preliminary ruling to the Court of Justice of the European Union (ECJ) under Article 267 TFEU.
23-05-2022 The Court of Justice of the European Union receives the request for a preliminary ruling from the Sąd Okręgowy w Warszawie.
08-06-2023 The Court of Justice of the European Union conducts a hearing on the case.
21-09-2023 The Advocate General delivers their opinion on the case at the sitting.
25-01-2024 The Court of Justice of the European Union delivers its judgment interpreting Article 9(2) and (3)(a) to (c) and Article 14(1)(c) of Regulation (EU) 2017/1001.