By a decision issued on February 19, 2015 (available here, in Italian), the Court of Milan confirmed the case law denying the applicability to car wheels of the repair clause set by Article 110 of Regulation 6/2002 on Community Designs and by the corresponding Article 241 of the Italian Intellectual Property Code.

The Court refused the defendant's request to refer the case to the Court of Justice of the European Union (CJEU) for a preliminary ruling, taking a different view to that of the Court of Turin, which recently referred for a preliminary ruling by the CJEU on the possible relevance of the repair clause with reference to car wheels bearing the trade marks of the original manufacturer (Case C-500/14, Ford Motor Company). Said the Court, the key issue here is an aesthetic evaluation of whether the appearance of the vehicle was affected by the appearance of the wheels.

The Court of Milan concluded that there was a clear independence between the appearance of the vehicle, itself being a complex product, and the appearance of the wheel which was a component part. The main basis for this assessment was that wheels provided an autonomous aesthetic character to the car in response to the car owner's taste -- a basis that was supported by the existence of wheels fitting the original manufacturers' cars but which implemented the design, these being autonomously set up by independent third parties. Additionally, the same wheels (as well as those designed by the car manufacturer) could potentially be installed on a variety of vehicles of different car manufacturers. Thus, in the absence of a necessary aeshetic bond between the complex product and the component at issue, the Court found that the sale of wheels was not aimed per se at restoring the original appearance of the vehicle. In this context, it was irrelevant that the wheels were explicitly purchased for a repair purpose since here too there would not be any restoration of the original appearance of the vehicle.

On this basis, the manufacture and sale by third parties of wheels implementing the design owned by the original car manufacturers would amount to infringement.

The Milan Court's approach is notable since, in order to resolve such this hotly-debated issue, it strictly focuses on the evaluation of the aeshetic dependence between complex product and component which is mentioned in Recital 13 of Regulation 6/2002:

"…it is appropriate not to confer any protection as a Community design for a design which is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the design is dependent and which is used for the purpose of the repair of a complex product so as to restore its original appearance, until the Council has decided its policy on this issue on the basis of a Commission proposal".

This could be the way to achieve an objective and clear interpretation of the repair clause.

This article was submitted by Evelina Marchesoni (Bird & Bird, Milan). Three of Bird & Bird's offices in Europe are members of MARQUES.