On November 11, 2014, a request from the Italian Tribunale Ordinario di Torino for a preliminary ruling reached the Court of Justice the European Union (C-500/14) concerning a wheel trim manufacturer producing wheel trims which bear, without the trademark proprietors’ consent, the trademark of various motor companies. The case was first reported on the UKIPO’s website.  The questions referred to the Court of Justice are:

(a) Is it compatible with [EU] law to interpret Article 14 of Directive 98/71 and Article 110 of Regula-tion (EC) No 6/2002 as conferring on producers of replacement parts and accessories the right to use trademarks registered by third parties in order to allow the end purchaser to restore the original appearance of a complex product and, therefore, also when the proprietor of the trademark applies the distinctive sign in question to a replacement part or accessory intended to be mounted on the complex product in such a way that it is externally visible and thus contributes to the external appearance of the complex product?

(b) Is the repair clause set out in Article 14 of Directive 98/71 and Article 110 of Regulation (EC) No 6/2002 to be interpreted as constituting a subjective right for third-party producers of replacement parts and accessories and, if so, does that subjective right include the right for such third parties to use the trademark registered by another party in respect of replacement parts and accessories, by way of derogation from the rules laid down in Regulation No 207/2009 and Directive (EC) 89/104 and, therefore, when the proprietor of the trademark also applies the distinctive sign in question to a replacement part or accessory intended to be mounted on the complex product in such a way that it is externally visible and thus contributes to the external appearance of the complex product?

By way of background, according to the “repair clause” in Article 110 (1) Regulation (EC) No 6/2002 (Community Designs Regulation – CDR), “protection as a Community design shall not exist for a de-sign which constitutes a component part of a complex product used […] for the purpose of the repair of that complex product so as to restore its original appearance”.  Different from that, as regards national design protection in the EU Member States, according to the “freeze-plus” provi-sion laid down in Article 14 Directive 98/71 (Designs Directive), the 28 Member States of the EU are allowed to “maintain in force their existing legal provisions” for design protection for spare parts, but if they should wish to change their nationals laws, this must be in favour of liberalisation, i.e., changes to existing provisions may be introduced “only if the purpose is to liberalise the market for such parts”.  Today, eleven of the 28 Member States have liberalised their national spare parts markets, including Italy.  In spring 2014, the European Commission’s “Proposal for a Directive of the European Parliament and of the Council amending Directive 98/71/EC on the legal protection of de-signs”, aiming at introducing a “repair clause” similar to that in Article 110 CDR into the Directive 98/71 had been withdrawn.  As a consequence, efforts to harmonize European design law further and to establish a Europe-wide “repair clause” must be considered terminated, at least for the time being (cf. here).

Question 1 now referred to the Court of Justice seems to mix aspects of European design and trademark law, basically seeking answers as to whether suppliers of wheel trims are allowed to raise the “repair clause” defence provided under both Community design law and Italian design law when (i) marketing wheel trims to which the trademarks registered by the original car maker are applied (ii) in order to allow end purchasers to mount these wheel trims on their cars in order to restore the original appearance when (iii) the original replacement part showing the mark contributes to the external appearance of the complex product.

Question 2 extends Questions 1 by focussing on whether the repair clause set out in Article 14 of Directive 98/71 and Article 110 of Regulation (EC) No 6/2002 is to be interpreted as constituting a subjective right for aftermarket suppliers and, if so, whether such a subjective right includes the right to use the mark of the original car maker “by way of derogation” from the rules laid down in Regulation No 207/2009 (Community Trademark Regulation – CTMR) and Directive (EC) 89/104 (Trademarks Directive).

Among the issues this case raises, we would highlight the following:

• Do “wheel trims”, which decorate car wheels, and are defined as “metallic decorative trim over or around the wheels of a motor vehicle”, actually constitute parts of a complex product within the meaning of Article 110 CDR or corresponding provisions in national law?  Readers may recall that car wheels have been held not to fall within that definition in case law, inter alia, from the UK (BMW v Round and Metal Ltd [2012] EWHC 2099: “In my judgment that means that Article 110 (1) should be interpreted as being restricted to component parts which are dependent on the appearance of the complex product.”) and Germany (Stuttgart Appeal Court, decision of September 11, 2014 – Case No 2 U 46/14; see also Dusseldorf District Court, decision of November 28, 2013 – Case No 14c O 304/12, clearly doubting that car wheels were covered by Article 110 CDR).  It would seem logical to assume that this would also apply to wheel trims, which are applied to the external surface of wheels.
   
• Under EU trademark law (Article 12 lit c CTMR), makers of spare parts or accessories are en-titled to make use of the mark of the product to which the spare part is intended to be ap-plied (for instance, vacuum bags for vacuum machines). The exact limits of that exception to trademark rights still need to be determined though. Does the present case actually require such a determination under trademark law when the wheel trims would be held to fall within the design law repair clause exception (which we consider doubtful in light of the existing case law)?
   
• More particularly, is there room for invoking the repair clause defence available under de-sign law, by way of analogy, also as a defence to trademark infringement claims when the spare part bearing the trademark is an integral part of the appearance of the product, or must the defence under Article 12 lit c CTMR be judged exclusively under trademark-law specific criteria of “honest practices”?

Perhaps readers of this blog can enlighten us further.