The repair clause (“must match”): Is it applicable in cases of trademark infringement? – Brief Analysis of the Spanish case law
In the area of design protection for spare parts for complex products (where parts for the automotive industry are undoubtedly one of the “stars”) there is a sort of transitional regime (the so called repair clause/must match clause) enshrined in Article 14 of the Directive 98/71 on Designs (the Directive), Article 110 of the Regulation 6/2002 on the Community Design (the Regulation), and for what the Spanish Legislation concerns the third Transitional Provision of Act 20/2003, of July 7th for the Protection of the Industrial Design.
In substance, the said regime allows the registration of designs that constitute parts of a complex product, although the right holder´s ius prohibendi is limited in cases where the component to which the design is incorporated is used to repair a complex product, restoring its “initial appearance”.
Spanish Courts have, in several occasions now, systematized the requirements to apply the mentioned limit. For illustrative purposes we quote here the Judgment No.16/13 of January 16th 2013 of the Commercial Court No. 1 of Alicante (seating as CTM court), where it was said that:
“Three circumstances must concur in accordance with Article 110 CDR so that the formal appearance of a product derived from its special features (such as lines, contours, color, shape, texture or materials or its ornamentation) does not deserve protection under Article 19 CDR despite be new and having individual character: a) be a component of a complex product; b) which is intended for the repair of the complex product to restore its original appearance c) the design of the component depends on the appearance of the complex product, as is apparent from recital transcribed (design or model applied … to … component of a complex product upon whose appearance the design is dependent) under which Article 110 must be interpreted “
In more practical terms, let´s imagine that a car had an accident and both front doors had to be replaced. These doors could be protected by the corresponding design registration. However, and since the component to which the design is incorporated (the door) is used to restore the “initial appearance” of the complex product (car), the holder of the design in question could not prevent a third party from marketing doors that incorporated such design.
Having said the above as an introduction to the subject matter, on November 10th 2014 the Tribunale di Torino submitted a question to the Court of Justice. We refer in particular to Case C-500/14, “Ford Motor Company”.
The facts giving rise to the dispute at hand are the following ones. Wheeltrims, the defendant, markets hubcaps bearing the famous Ford logo. After being aware of the above Ford sued Wheeltrims for infringement of its trade mark rights (in this case the hubcaps in question had no protection via design). As a defense Wheeltrims argued that there would be no room for infringement since the inclusion of the Ford mark on the hubcaps would be covered by the exception contained in Article 110 of Regulation and 14 of the Directive (the “repair clause”).
In other words, since the hubcaps would be used to restore the original appearance of the car, a third party not only could not be prevented from marketing hubcaps protected by a given design registration (repair clause) but such limitation on the rightholder rights would be extended to any trademark born by the said hubcaps (broad interpretation of the repair clause).
Before such defense, and summarizing the two questions referred, the Italian Court wants to confirm whether the exception provided –repair clause- in both the Directive and the Regulation (in the field of industrial models or designs) can be extrapolated to further justify the use of a trademark in a component (hubcaps in this case) that could serve as a replacement to restore the original appearance of a complex product (car).
The question is not new. As a matter of fact there are already several precedents that have somehow addressed this issue either in Italy or in other Member States such as the UK or Spain.
Focusing on the Spanish construction, case law has overwhelmingly opted to interpret that the limit established within the Spanish Act, under Articles 110 of the Directive and 14 of the Regulation would not apply to a trademark infringement scenario.
This would be due to two different reasons.
First. Following the British doctrine it has been confirmed in countless occasions that the wheel rims could not be considered as spare parts (to repair), but as mere accessories. So, they do not fall within the scope of the repair clause, that applies only in cases where the components on which the protected design is incorporated serve to repair the complex product (See in this regard the Judgement No. 16/13 already cited, any of the following ones issued by the Spanish CTM Appeal Court, nº 303/12 (28th June), 278/10 (June 18th), or the Decrees no. 23/11 y 437/10 of the Spanish CTM Court no.1).
If for wheel rims the limit we are referring to (for designs) is not applicable, it would neither be applicable in trademark scenarios.
It is true that the case we are dealing with now is not about wheel rims but hubcaps. However we understand that the criterion mentioned in connection with the first is fully transferable to the second.
Second. In addition to the above, which excludes the application of the exception according to the type of component (part), its extensive application (reaching trademark issues) has also been denied taking into account the risk that it would generate. On this regard see the aforementioned judgment of the Spanish Community Trademark Appeal Court No. 278/10. where it was said that:
“Thus, even if marketing of wheel rims under the repair clause of Art. 110 RDMC was considered legitimate, that may not be construed as to legitimate the reproduction of the signs of the plaintiff generating the risk of creating a relationship (which does not exist) between the rim and the owner of another’s trademark”
I do believe that the approach taken by the vast majority of the case law (Spanish as shown but in similar terms in the UK and Italy) is by far the most logical one.
It would just be a nonsense to allow, by virtue of a clause foreseen to be applied within design law, the use in the course of trade of a third party´s sign (reputed in most cases) for identical products, giving rise, to an evident likelihood of confusion.
That said, we eagerly expect the decision of the Court of Justice. We’ll see if it is aligned with our conclusions.
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