Spare parts and trade mark infringement
Case c-500/14 The Tribunale ordinario di Torino, Italy has asked the Court of Justice of the European Union to settle a question that has been raised several times within the Italian Court system.
This case concerned the unauthorised manufacture of spare part wheel trims bearing the trade mark of original manufacturer in order to enable their purchase to match the appearance of the car.
The questions referred to the CJEU were:
(a) Is it compatible with EU law to interpret Article of Directive 98/71 and Article 110 of Regulation No 6/2002 as conferring on producers of replacement parts and accessories the right to use trade marks registered by third parties in order to allow the customer to restore the original appearance of the car?
(b) Is the repair clause set out in the Articles above to be interpreted as constituting a subjective right for third party producers of replacement parts and accessories, does that extend to allowing their products to carry the trade mark of the original manufacturer?
A decision has not been handed down as of the date of this article, but it is highly likely that the CJEU will not rule in favour of this interpretation of the law. It stands to reason that if you buy an unauthorised third party product that you cannot use the trade marks associated with the original product in fear of confusing the public as to the origin and quality.
If however the CJEU decides otherwise, we may purchase third party parts for our cars bearing the original trade mark of the car manufacturer, why would we therefore pay the premium associated with buying an original manufacturers part when you can buy an identical replacement for a fraction of the price?