AUDI AG brought an action for trade mark infringement against GQ before the Polish courts, alleging that the defendant inserted the sign consisting of the “four rings”, registered as a trade mark of the European Union, owned by AUDI, on its products (radiator grilles) intended for cars manufactured by AUDI, which also enjoyed the status of a well-known trade mark.

The national court had doubts as to whether the defendant, the manufacturer of the spare parts, was making legitimate use of the trade mark, bearing in mind that there is no rule in Regulation 2017/1001 similar to that contained in Article 110(1) of Regulation 6/2002 on Community designs, according to which ‘a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of enabling the complex product to be repaired so as to restore its original appearance shall not be protected as a Community design’. Accordingly, it asks the Court of Justice a number of questions, which it rephrases as it understands them and answers in the judgment.

The first question which the Court seeks to answer is whether the importation and offering for sale of a spare part for a motor vehicle (radiator grille) bearing an element the shape of which is identical or similar to a trade mark owned by the manufacturer of that vehicle and which is intended to affix, on that part, the manufacturer’s logo representing that trade mark, constitutes ‘use in the course of trade of any sign’ within the meaning of Article 9(2) of Regulation 2017/1001.

The decision begins by recalling that the Court of Justice has already clarified the scope of Article 110 of Regulation 6/2002, in the sense that this provision only provides for certain limitations to design protection and applies without prejudice to the provisions of European Union law relating to trade marks. That provision does not contain any exception to EU trade mark law.

Regulation 2017/1001 includes the objective of preserving undistorted competition. Moreover, the objective of preserving undistorted competition by limiting the effects of the right enjoyed by the proprietor of an EU trade mark under Article 9 of that regulation. Article 14 seeks to achieve a balance between the fundamental interests of protection of the right conferred by that trade mark and the free movement of goods and freedom to provide services in the internal market, so that that right can fulfil its role as an essential element of the system of undistorted competition.

Therefore, there can be no interpretation of Article 9 of Regulation 2017/1001 which, in order to take account of the objective of preserving undistorted competition between car manufacturers and sellers of non-original spare parts, would lead to the application by analogy of Article 110 of Regulation 6/2002 and to limit, by virtue of that provision, the right conferred on the proprietor of an EU trade mark by Article 9 of that regulation.

On the other hand, the concept of ‘use’ within the meaning of Article 9, in the light of the case-law, is distinguished by the fact that it must involve active conduct on the part of the third party in the context of a commercial activity with a view to profit and not in the private sphere. It is use in the “course of trade”.

The trade mark has the essential function of guaranteeing identity of origin; it serves, in particular, to establish that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking, which may be held responsible for the quality of those goods or services, so that the trade mark may fulfil its function as an essential element in the system of undistorted competition. In addition, however, the trade mark fulfils an investment function which is defined by the possibility for the proprietor of a trade mark to use that trade mark to acquire or maintain a reputation in order to attract consumers and win a loyal clientele, by means of various commercial techniques.

The Court therefore holds that the answer to the third and fourth questions referred for a preliminary ruling must be that Article 9(2) and (3)(a) to (c) of Regulation 2017/1001 must be interpreted as meaning that a third party who, without the consent of a car manufacturer which is the proprietor of an EU trade mark, imports and offers for sale spare parts, namely radiator grilles, for those cars, bearing an element intended to affix the logo representing that trade mark, the shape of which is identical or similar to that trade mark, makes use of a sign in the course of trade in a way which is liable to adversely affect one or more functions of that trade mark, which is a matter for the national court to determine.

The national court also asks the question whether Article 14(1)(c) of Regulation 2017/1001 must be interpreted as precluding a car manufacturer which is the proprietor of an EU trade mark from prohibiting a third party from using a sign identical with, or similar to, that trade mark on spare parts for those cars, namely radiator grilles, where that sign consists of the shape of an element of the radiator grille which is intended to affix to the grille the emblem representing that trade mark, taking into account whether or not it is technically possible to affix that emblem to the radiator grille without affixing that sign to the radiator grille.

As a preliminary observation, the STJU notes that, while the proprietor of an EU trade mark may prohibit a third party from using a sign identical or similar to that trade mark under Article 9 of Regulation 2017/1001, Article 14 of that regulation limits, in the situations referred to therein, the right of that proprietor to oppose such use. Pursuant to Article 14(1)(c) of Regulation 2017/1001, an EU trade mark does not entitle its proprietor to prohibit a third party from using, in the course of trade, the EU trade mark for the purpose of designating goods or services as those of the proprietor of that mark or of referring to them, in particular where the use of that mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts. The purpose of this limitation of the trade mark proprietor’s right (which corresponds to Article 14(1)(c) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015) is to allow suppliers of goods or services offered by the proprietor of a trade mark to use that trade mark to inform the public, in a comprehensible and comprehensive manner, of the intended purpose of the product or service which they market or of the service which they offer or, in other words, of the functional link between the goods or services and those of the proprietor of the trade mark.

It follows that, where a sign which is identical or similar to an EU trade mark constitutes an element of a spare part for motor vehicles which is intended to be affixed to that part with the logo of the manufacturer of those motor vehicles and is not used to designate goods or services as those of the proprietor of that trade mark or to refer to them, but to reproduce as faithfully as possible a product of that proprietor, such use of that trade mark does not fall within the scope of Article 14(1)(c) of Regulation 2017/1001.

In conclusion, the CJEU holds that, in the light of the foregoing considerations, the answer to the first question referred for a preliminary ruling must be that Article 14(1)(c) of Regulation 2017/1001 must be interpreted as not precluding a car manufacturer which is the proprietor of an EU trade mark from prohibiting a third party from using a sign identical or similar to that trade mark on spare parts for those cars, namely radiator grilles, where that sign consists of the shape of an element of the radiator grille, intended to affix to it the emblem representing that trade mark, whether or not it is technically possible to affix that emblem to the radiator grille without affixing that sign to it.

STJUE 25 January 2024 C 334/22 AUDI V. GQ