Prohibition of
Brand use for
Spare parts.
Prohibition of
Brand use for
Spare parts.
from
The use of trademarks for spare parts repeatedly gives rise to trademark disputes. Does a trademark owner have to tolerate the use of his trademark for spare parts or can he defend himself against it?
Audi takes action against Polish dealer
The car manufacturer Audi is the owner of a European Union figurative mark with the four rings, the Audi emblem. This trademark is registered for motor vehicles, spare parts and accessories.
A Polish dealer advertised and offered for sale radiator grilles designed and intended for Audi models from the 1980s and 1990s. Like the original grilles, these radiator grilles had a recess for the car manufacturer’s emblem, which corresponded to the appearance of Audi’s Union brand.
Audi saw this as a trademark infringement and took legal action against it in Poland. The Polish court referred the case to the European Court of Justice (ECJ) for clarification.
Does the sale of spare parts for cars constitute “use of a sign in the course of trade” which may impair the functions of the trademark? Can the trademark owner prohibit third parties from such use?
Decision of the EUGH on the use of trademarks for spare parts
In its decision (Judgment of 25.01.2024 – Ref. ) ruled in favor of Audi and affirmed both the use of the trademark in the course of trade for spare parts and the possibility of the trademark owner to prohibit the use of the trademark for spare parts.
The Luxembourg judges found that the repair clause provided for designs was not applicable in trademark law.
Since the part intended for affixing the Audi emblem is integrated into the radiator grilles marketed by the third party, it is visible to the relevant public. As a result, a link could be established between the spare part in question and Audi, so that the trademark’s function of origin and quality could be impaired.
The Court finds that the motive to create a replacement part that is as close as possible to the original grille does not limit the exclusive law of the original manufacturer and trademark owner to prohibit the use of an identical or similar sign.
The proprietor of an EU trademark can prohibit third parties from using a radiator grille element that serves to affix his trademark-representing emblem – regardless of whether the emblem could technically be affixed without this element.
Conclusion
According to the ECJ, the use of a trademark for spare parts without the consent of the trademark owner regularly constitutes a trademark infringement. Suppliers of spare parts should therefore refrain from using third-party trademark rights. In contrast to trademark protection, there are exceptions to design protection for spare parts.
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