EU: The "repair clause" cannot affect trade mark protection

Ford Motor Company ("Ford") is a well-known manufacturer of vehicles, spare parts and car accessories. Its goods are marked with its trade marks ("Ford Trade Marks").

Wheeltrims srl ("Wheeltrims") is a distributor of spare parts and car accessories. It sells wheel trims on which trade marks of various car companies (including those of Ford) are reproduced, without the consent of car manufacturers.

Ford filed a lawsuit in the Court of Turin against Wheeltrims to prevent them from further distributing wheel trims bearing the Ford Trade Marks and seeking compensation for damages. Ford argued that the unauthorised reproduction of the trade marks on the wheel trims constituted an infringement of their exclusive rights in the Ford Trade Marks. Ford further argued that it was not necessary for Wheeltrims to use the Ford Trade Marks to indicate the origin of the original part that the spare part or car accessory is designed to replace; a mark that was not protected as a Ford Trade Mark would suffice.

Wheeltrims argued that the use of the Ford Trade Marks was merely descriptive and based its defence on the repair clause⁶. Wheeltrims argued that in reproducing the Ford Trade Marks on the wheel trims, they did not intend to indicate the origin of the spare parts (i.e. the wheel trims) but instead to identify the manufacturer of the main product (i.e. the car). Additionally, the use of the trade marks on the wheel trims was meant to recreate the aesthetic and descriptive features of the original component part in order to restore the original appearance of the complex product (i.e. the car).

The Court of Turin acknowledged that Wheeltrims' actions were not necessary to indicate the origin of the wheel trims. However, the Court had doubts regarding the scope of the application of the repair clause given that the CJEU had not yet expressed its opinion on the relationship between the trade mark protection and the repair clause.

The Court of Turin considered two possible interpretations. First, that the repair clause was derogation from the protection afforded by design rights, thereby maintaining trade mark rights, second that the repair clause "trumps" trade mark rights.

In accordance with the second interpretation, the reconstruction of the appearance of the complex product needs to be exact. Thus, it should be made independently of the existence of another industrial property right, in particular resulting from the trademark registration. This gives the producer of the original and non-original spare parts the possibility to conduct business in compliance with the principle of equality.

The Court of Turin referred its questions concerning the scope of the repair clause to the CJEU. The CJEU issued a decision stating that:

1. undisturbed competition was provided for in the provisions contained in the Community trade mark Regulation and Trade Mark Directive; and that
2. the protection of trade mark rights provided by the Trade Mark Directive and/or Community trade mark Regulation could not be impinged upon by the repair clause.

Consequently, the CJEU ruled that the repair clause does not allow manufacturers of spare parts and accessories to reproduce marks on their products which are identical to the registered trade marks owned by the car manufacturer simply because that use of the trade mark would lead to the restoration of the original appearance of the complex product.

The judgment is fundamental to design law as it establishes the boundaries between the regimes of design and trade mark protection.