Design-law repair clause does not provide for a deviation from provisions of the Trademark Directive and the Community Trademark Regulation
18-10-2019 Print this page
A manufacturer of replacement parts and accessories for motor vehicles that affixes a sign identical to a trade mark registered for to its products without permission can not invoke the repair clause pursuant to article 14 Designs Directive and article 110 Community Designs Regulation: mentioned articles do not contain any derogation from the provisions of the Trade Marks Directive and the EU Trade Mark Regulation, the objective of protecting the system of undistorted competition was already taken into account in drafting the directive and regulation, national courts may not limit the exclusive right conferred by a trade mark in a manner which exceeds the limitations arising from the directive itself.
The question referred for a preliminary ruling by the referring Italian court is whether a manufacturer of spare parts and accessories for cars which affixes a mark to his goods without permission can invoke the design-law repair clause pursuant to Article 14 of the Designs Directive and Article 110 of the Community Designs Regulation. The CJEU answered this question in the negative.
In the opinion of the CJEU, the aforementioned provisions do not provide for a derogation from provisions of the Trademark Directive and the Community Trademark Regulation, since these only impose certain restrictions on the protection of designs and are without prejudice to trademark law. With regard to the assertion set out by the referring court and defended by Wheeltrims that the objective pursued by the Union to protect the system of undistorted competition requires that the application of the aforementioned be extended to the protection of trade marks, the CJEU considers that it should be noted that the EU legislator has already taken this objective into account in the context of the Trade Marks Directive and the Community Trademarks Regulation. Moreover, according to settled case law, the national court cannot restrict trade mark law in a way that goes beyond the limitations arising from the Trademark Directive itself.
IPPT20151006, CJEU, Ford v Wheeltrims
