Four rings on a spare part car grille infringes Audi’s trade mark

Have you heard about the recent legal dispute between Audi and GQ that has been making waves in the automotive industry? If not, the Court of Justice of the European Union (“CJEU”) has recently ruled in favour of Audi in a landmark trade mark case with significant implications for spare parts manufacturers.

The dispute originated in Warsaw, Poland and involved an online Polish retailer, GQ, selling spare car radiator grilles designed for older Audi models. These grilles had a carved-out space for Audi’s iconic four-ring logo, and Audi claimed that such non-original radiator grills infringed its trade mark.  As a result, Audi commenced legal proceedings against GQ, prompting the Regional Court in Warsaw to seek guidance from the CJEU on whether Audi could prohibit the sale of such parts.

So, what was the outcome of the CJEU’s verdict? The court essentially ruled that:

• Article 9(2) and (3)(a) to (c) of Regulation No. 2017/1001 must be interpreted as meaning that, a third party who, without the consent of the manufacturer of motor vehicles (which is the proprietor of an EU trade mark), imports and offers for sale spare parts, namely radiator grilles for those motor vehicles, containing an element which is designed for the attachment of the emblem representing that trade mark and the shape of which is identical with, or similar to, 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. Whether any functions were affected is a matter for the national court to decide.
• Article 14(1)(c) of Regulation No. 2017/1001 must be interpreted as meaning that it does not prevent the manufacturer of motor vehicles (which is the proprietor of an EU trade mark) from prohibiting a third party from using a sign, whether identical or similar, to that trade mark, regardless of whether or not there is a technical possibility of attaching that emblem to the radiator grille without affixing that sign to it.
• The so called “repair” clause found in Article 110 Community Design Regulation No. 6/2002 cannot be raised as a defence against trade mark infringement. It therefore does not matter whether or not the spare part is used for the purposes of repairing a complex product so as to restore its original appearance.

So what does this all mean? Here, the CJEU noted that the radiator grilles did not originate from Audi and were not placed on the market with its consent.  In addition, it was noted that the visibility of the mounting element to consumers wishing to purchase a radiator grille in order to repair or have repaired a car creates a material link between such spare part and Audi’s trade mark.

The CJEU therefore concluded that Audi had the power to enforce its trade mark rights in this context, emphasising that the component designed to hold the car logo on non-original radiator grilles also served a marketing purpose.

With the CJEU’s decision, the case returns to the national court in Poland for a final ruling.

This case is a win for car manufacturers and acts as another barrier to the sale of spare parts. The CJEU’s decision reinforces the importance of trade mark law in maintaining the distinctiveness and reputation of well-known brands, even in the context of aftermarket components.  As the case awaits a final ruling in Poland, it underscores the delicate balance between trade mark protection and the evolving landscape of spare parts manufacturing in the automotive industry.

Should you have any queries in relation to trade marks, or indeed any other intellectual property law matters, please contact Karen Lee or any other member of our Intellectual Property Team.

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