CJEU: Radiator grilles where the sign constitutes a mounting element reflecting the EU trade mark
25-01-2024 Print this page
The trade mark proprietor/court may prohibite a third party from using in the course of trade a sign which is identical or confusingly similar to an EU trade mark, in relation to automotive spare parts (radiator grilles) where that sign constitutes a mounting element for an automotive accessory (an emblem reflecting the EU trade mark).
The Questions referred:
Must Article 14(1)(c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark 1 be interpreted as precluding the trade mark proprietor / court from prohibiting a third party from using in the course of trade a sign which is identical or confusingly similar to an EU trade mark, in relation to automotive spare parts (radiator grilles) where that sign constitutes a mounting element for an automotive accessory (an emblem reflecting the EU trade mark), and:
- where it is technically possible to affix the original emblem reflecting the EU trade mark to an automotive spare part (radiator grille) without reproducing on that part a sign identical or confusingly similar to the EU trade mark;
or in a situation
- where it is technically impossible to affix the original emblem reproducing the EU trade mark to an automotive spare part (radiator grille) without reproducing on that part a sign identical or confusingly similar to the EU trade mark?
- if the answer to any of the questions in 1(a) is in the affirmative:
What evaluation criteria should be used in such cases to determine whether the use of an EU trade mark is consistent with honest practices in industrial and commercial matters?
Must Article 9(2) and Article 9(3)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark be interpreted as meaning that, where the trade mark is included in the shape of an automotive part and in the absence in Regulation 2017/1001 of a clause that would be similar to the repairs clause in Article 110(1) of Council Regulation (EC) 6/2002 of 12 December 2001 on Community designs, 1 the trade mark does not fulfil a designation function in that situation?
Must Article 9(2) and Article 9(3)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark be interpreted as meaning that, where the mounting element for a trade mark, which reflects the shape of the trade mark or is confusingly similar to it, is included in the shape of an automotive part and in the absence in Regulation 2017/1001 of a clause that would be similar to the repairs clause in Article 110(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, that mounting element cannot be regarded as a trade mark with a designation function even if it is identical to the trade mark or confusingly similar to it?
The Court rules (machine translated):
1) Article 9(2) and (3)(a) to (c) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, must be interpreted in the sense that:the third party who, without the consent of the motor vehicle manufacturer holding a European Union trademark, imports and offers for sale spare parts, namely grilles for such motor vehicles, containing an element which is designed for attachment of the emblem representing this mark and the form of which is identical or similar to the said mark, makes use of a sign in the life of business in a manner which is likely to undermine one or more functions of the same mark, which it is up to the national judge to verify.
2) Article 14(1)(c) of Regulation 2017/1001 must be interpreted in the sense that: it does not object to the manufacturer of motor vehicles holding a European Union trademark prohibiting a third party from using a sign identical or similar to that mark for spare parts for these motor vehicles, namely grilles, when this sign consists of the shape of an element of the grille, designed for fixing thereon the emblem representing said brand, without it being important in this regard whether or not it exists a technical possibility of fixing this emblem on said grille without affixing said sign thereon.
IPPT version will follow anytime soon
ECLI:EU:C:2024:76 (Machine translated) and case C-334/22.
