C-334/22, Audi AG v. GQ

Court

Court of Justice of the European Union

Our Position

When a trademark is incorporated into the shape of an automotive part (in the case at issue the trademark is affixed to a mounting device of a radiator grille) and, in the absence of a clause in the European Union Trade Mark (EUTM) Regulation similar to the repairs clause in the Community Design Regulation, the trademark fulfills a designation function to the extent that it would be perceived by the public, or part thereof, to denote that the relevant goods originate from, or are authorized by, the trademark owner.

Furthermore, in INTA’s view, according to Article 14(1)(c) of the EUTM Regulation on the limitation of the effects of an EUTM, a trademark owner may prohibit third parties from using, in the course of trade, a sign that is identical or confusingly similar to its trademark, where that sign constitutes a mounting element for an automotive accessory (i.e., an emblem reflecting said trademark), whenever it is technically possible to affix the original emblem reflecting the EUTM to an automotive spare part without reproducing on that part a sign identical or confusingly similar to the EUTM.

To the contrary, a trademark owner is precluded from prohibiting such conduct by third parties in a situation where it is technically impossible to affix the original emblem reproducing the EUTM to an automotive spare part (specifically a radiator grille) without reproducing on that part a sign identical or confusingly similar to the EUTM, as this use would be necessary to indicate the intended purpose of the relevant product. Should this be the case, the third parties’ use should nonetheless meet the honest practice test as set forth by the established EU case law.

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