Does the repair clause provide a defence against trade mark infringement?

A posting by Henning Hartwig on the Class 99 blog tells me that the Tribunale Ordinario di Torino applied on 11 November last year for a preliminary ruling from the Court of Justice (Case C-500/14 Ford Motor Company). The case concerned a wheel trim manufacturer whose products bore vehicle manufacturers' trade marks - without, naturally (otherwise it could hardly have troubled the courts), the trade mark owners' consent. The UKIPO gives details of the case.

Protection for spares under design laws, including the harmonised law under the EU's designs directive and the EU's own design regulation, is a tricky area. The Community Designs Regulation contains a so-called 'repair clause' (Article 110 (1) Regulation (EC) No 6/2002) which tries to prevent design protection from hindering efforts to make your car look the way it should, following an accident or other misfortune such as rust. Article 14 of the Designs Directive (Directive 98/71) allows the Member States to keep existing legal provisions for design protection for spare parts, permitting them to change the rules only in the direction of 'liberalisation' (the so-called 'freeze-plus' compromise, and I place inverted commas round the word 'liberalisation' on the basis that vehicle manufacturers would not use the word - they might think 'anarchy' more appropriate).  Eleven of the 28 Member States have liberalised their national spare parts markets in this way, including Italy where the present case comes from. (The UK had already gone as far as possible in the direction of liberalisation.) Last spring, the Commission’s proposed amendment to introduce a repair clause similar to that in Article 110 CDR into the Directive 98/71 was withdrawn, so there is no prospect of a repair clause being imposed at national level.

Design law, then, cannot generally be used to stop a wheel trim manufacturer making wheel trims to restore the appearance of the car. But if the wheel trim that needs to be replaced has the vehicle manufacturer's trade mark on it, does the repair clause trump trade mark law, or vice versa? And of course it's not only wheel trims. Accordingly the questions referred to the Court are:

(a) Is it compatible with [EU] law to interpret Article 14 of Directive 98/71 and Article 110 of Regulation (EC) 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 end purchaser to restore the original appearance of a complex product and, therefore, also when the proprietor of the trademark applies the distinctive sign in question to a replacement part or accessory intended to be mounted on the complex product in such a way that it is externally visible and thus contributes to the external appearance of the complex product?

(b) Is the repair clause set out in Article 14 of Directive 98/71 and Article 110 of Regulation (EC) No 6/2002 to be interpreted as constituting a subjective right for third-party producers of replacement parts and accessories and, if so, does that subjective right include the right for such third parties to use the trademark registered by another party in respect of replacement parts and accessories, by way of derogation from the rules laid down in Regulation No 207/2009 and Directive (EC) 89/104 and, therefore, when the proprietor of the trademark also applies the distinctive sign in question to a replacement part or accessory intended to be mounted on the complex product in such a way that it is externally visible and thus contributes to the external appearance of the complex product?

 An interesting pair of questions. Were it not for a suspicion that wheel trims, being sold usually in sets of four, might actually be accessories rather than replacement parts, as often aftermarket wheel trims look quite different from the original ones (and in my experience often don't fit, but that's another matter), it might be a lot easier. Wheels have been held not to be parts of a complex product (in BMW v Round and Metal Ltd [2012] EWHC 2099 Arnold J said: 'In my judgment that means that Article 110 (1) should be interpreted as being restricted to component parts which are dependent on the appearance of the complex product', and Dr Hartwig also cites a couple of German cases: the Stuttgart Appeal Court decision of 11 September 2014 – Case No 2 U 46/14 and the Düsseldorf District Court decision of November 28, 2013 – Case No 14c O 304/12). Makers of spare parts or accessories are entitled to make use of trade marks identifying the product to which the spare part is designed to be applied , although how far that runs is far from clear and it certainly has to be ‘in accordance with honest practices in industrial and commercial matters’. It might be that the present case actually requires consideration of whether this trade mark exception applies, rather than the repair clause – in other words, this is a trade marks problem not a designs one. Commentators also ask whether the repair clause might be invoked in trade mark law, where the trade mark itself is an integral part of the appearance of the product – an intriguing possibility. The ‘honest practices’ rubric seems the right context in which to consider the need to use the trade mark for this purpose, so that there would be nothing dishonest about applying the trade mark if the original wheel trim carried it (and the design of the replacement wheel trim is identical to that of the original).