Germany/Italy: BMW in claim for infringement of wheel design

This blog post from Dr Meyer-Dulheuer & Partners tells us that BMW have become embroiled in legal proceedings over a design for a wheel. Specifically, they have an EU Registered Design for the wheel, and an Italian company named Acacia has made wheels allegedly to the design. Acacia supply their products under the "Wheels Spare Parts" brand, which gives a pretty clear indication of how they hope to avoid a successful claim that they have infringed. Good luck to them, in light of the Round and Metal case in the UK. Of course the courts of another Member State might differ - and the history of EU design law tells us that continental countries don't necessarily share the UK's views on spare parts.

So far, the dispute has been focused on forum. Acacia applied to the Italian courts for a declaration of non-infringement, and the matter eventually found its way to Luxembourg where the Court of Justice held that the courts of the defendant's country were the right venue for the dispute. The matter is complicated by the fact that the so-called "repair clause" (the EU equivalent of the UK's "must-match" exemption) has been adopted in Italian but not in German law, so (between Germany and Italy) Acacia's defence could only work in its home country. Acacia's apparent hope that BMW's response to the Italian proceedings would give the court jurisdiction didn't work either - although parties to foreign proceedings must always take great care when faced with the need to take a step that could be regarded as accepting jurisdiction.

So now it seems that we can await, with great interest, the judgment on the substantive claim from the German court.

Here is the Judgement of the Court (Second Chamber) from 13 July 2017.

Repair clause referred to Court of Justice

Motor Law's great friend David Musker reports on the Class 99 blog that a court in Milan has referred to the Court of Justice (how nice to see the institution being identified by the correct name!) for an interpretation of the repair clause (Article 110 of the EU designs regulation, No 6/2002). The questions asked - of which there are two - are (as is so often the case, partly I suspect as a result of their having been translated into English) pretty incomprehensible. Why do these questions so often have to ask if something is "precluded"? In BMW v Round and Metal, to which the article refers, Arnold J, in a judgment that epitomises the adjective "Arnoldian", rejected the proposition that the defendant's alloy wheels fell within the scope of the repair clause: they were sold not as straight replacements but as alternatives, with different dimensions - and tellingly they were usually supplied in sets of four. What a misfortune to damage all the wheels of your car at once! Although it reminds me of a client who found her Boxster (this was probably 20 years ago) completely devoid of wheels one morning ...

An interesting point in the reference is that it appears to try to establish a connection between the "complex product" (the car) and the replacement part by reference to the fact that the wheels are approved under UNECE Regulation No 124 for use on that particular model of car. I'm looking forward to seeing what the court makes of that. I'm also trying to find some more enticing prospects to look forward to.

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).