The Court of Justice of the European Union has recently given a ruling that extends the protection afforded to trademark proprietors by European law and severely restricts the ability of spare parts manufacturers to affix a sign identical or similar to this trademark to spare parts marketed and intended for incorporation in products marketed by the trademark proprietor.
In particular, on the basis of the practice of a manufacturer of spare parts for Audi motor vehicles of offering for sale, without Audi’s consent, radiator grilles for those vehicles, containing an element designed for the attachment of the logo representing that brand, the shape of which is identical or similar to that of the Audi trademark, the Court held that such use was liable to affect the functions of the trademark.
The Court held that not all such use of the trademark is prohibited, but that the use of a trademark by a third party to identify or present goods or services as those of the proprietor of that trademark is excluded where such use is necessary to indicate the intended purpose of a product marketed by that proprietor. In that case, the use is authorised by law and cannot be prohibited by the trademark proprietor under Regulation 2017/10001.
The situation to which the decision refers, and which was relevant in the present case, is that the choice of the shape of this element was not absolutely necessary but was guided by the desire to market a grille that was as close as possible to the original grille of the manufacturer of the motor vehicles concerned. From a procedural point of view, the CJEU also held that it is for the national courts to determine whether the trademark proprietor’s rights have been infringed in such cases.