The design of a product is often the deciding factor in purchase choices made by consumers.
The European Union harmonised industrial design protection across EU countries through a regulation on community designs. Designs capable of protection relate to the appearance of the whole or part of a product resulting from its lines, contours, colours, shape, texture or materials of the products itself or its ornamentation. Designs that can be the subject of protection must be novel and have individual character. A product is not novel if it has already been made available to the public.
The requirement of individual character is fulfilled if the overall impression of the design differs from the overall impression of any other design.
The definition of product specifically includes parts intended to be assembled into a multicomponent product of which the components can be replaced, permitting disassembly and reassembly. The regulation affords protection to component parts only if they remain visible during normal use of the product by the end user and fulfill the requirements as to novelty and individual character.
On the other hand, no protection is afforded to a must-fit spare part, that is, a design that comprises features of the appearance of a product, which must be necessarily reproduced in its exact form and dimensions to perform its function within the multicomponent product.
Initial plans for the protection of spare parts and their use in repairs, particularly for cars, under the regulation was a bone of contention since any protection of such parts was deemed to impact negatively on the repair industry and tie the consumer to the seller of the original product.
For this reason, full-scale approximation regarding the use of designs for repairs was not achieved.
For the time being, designs that constitute a component part of a complex product for the purposes of its repair so as to restore its original appearance are not offered protection under the regulation. The protection of such component parts of complex products was left to the discretion of the member states in terms of the EU directive on the legal protection of designs.
The holder of a trademark may not prohibit an independent trader carrying out maintenance
Within this legal context, a reference for a preliminary ruling was made by the Italian courts to the Court of Justice of the European Union (CJEU) in a case instituted by Ford Motor Company against Wheeltrims, an Italian company that manufactured and sold wheel trims with the trademarks of Ford. Ford complained that the unauthorised use of its trademark by Wheeltrims constituted a breach of its rights and sought to stop such breach.
The Italian courts asked the CJEU whether EU law on design rights conferred on producers of replacement parts the right to use trademarks of third parties to allow the end purchaser to return the product to its original appearance.
In no uncertain terms, the CJEU ruled that the trademarks of Ford are infringed if wheel trims are sold with the logos of Ford without the consent of the trademark owner. A registered trademark confers on its holder exclusive rights and the holder is entitled to prevent all third parties from using its trademark.
It is now clear that producers of spare parts are not allowed to manufacture and sell wheel trims on which trademarks of the vehicle manufacturers is affixed, without the latter’s authorisation. This means that the producers of spare parts cannot reproduce the trademark of the manufacturers as this could create confusion between the products of the trademark owner and those offered by the manufacturer of the spare parts.
The Luxembourg Court based its decision primarily on the fact that the EU legislation on design rights, in particular those provisions dealing with replacement parts, do not provide any derogation from the applicable EU legislation on trademarks.
The Court referred to a previous ruling it had given in proceedings filed by BMW against Deenik in connection with the use of trademarks by auto repairers. In that case, Deenik ran a garage and specialised in BWM repairs. He used the BWM trademark in advertisements of repairs and maintenance services to BWM cars. The CJEU had established, in line with EU legislation, that the holder of a trademark may not prohibit an independent trader carrying out maintenance and repairs of BMW cars from using the trademark to be able to communicate that he offers such service to customers, provided that the use is necessary to indicate that purpose and such use is in accordance with honest practices in industrial or commercial matters. Any person banking on the use of a trademark in such circumstances must act dutifully towards the interests of the trademark owner.
jgrech@demarcoassociates.com
Josette Grech is adviser on EU law at Guido de Marco & Associates.