Keeping in trim? Ford wheel of fortune spins as CJEU faces spare part questions

Case C-500/14 Ford Motor Company is a reference made by the Tribunale ordinario di Torino, Italy, for a preliminary ruling by the Court of Justice of the European Union (CJEU) on a matter that has been raised before the Italian courts on a number of occasions in recent years -- the unauthorised manufacture of "spare part" wheel trims bearing the trade marks of the original manufacturer in order to enable the purchaser to make sure that his purchase matches the appearance of the rest of his car. The subtle twist here is not however whether there is an infringement of any trade mark rights but whether there is a defence based on European design law. The questions referred to the Court of Justice are:

(a) Is it compatible with [EU] law to interpret Article 14 of Directive 98/71 [on the legal protection of designs] and Article 110 of Regulation ... 6/2002 [on Community designs] 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 trade mark 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 ... 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 trade mark registered by another party in respect of replacement parts and accessories, by way of derogation from the rules laid down in Regulation ... 207/2009 and Directive ... 89/104 and, therefore, when the proprietor of the trade mark 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?

Both Article 14 of the Directive and Article 110 of the Regulation are transitional provisions. Article 14 of the Directive reads as follows:

Until such time as amendments to this Directive are adopted on a proposal from the Commission in accordance with the provisions of Article 18, Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts.

Article 110((1) reads as follows:

1. Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.

This Kat is unaware of the precise factual circumstances of the underlying litigation that has led to the Tribunale ordinario di Torino asking these questions, but -- irrespective of the circumstances -- he is fairly certain that the CJEU will not rule in favour of any resolution of them that leads to anyone other than the trade mark owner being allowed to affix a trade mark, be it two or three dimensional. verbal or figurative, to wheel trims in any situation in which consumers may be misled or deceived.  However, Merpel adds that there are other forces at play here: the actual purchaser of non-Ford replacement parts bearing Ford trade marks may not be confused or deceived, but what about the position of the person who buys the vehicle from him?  Both Kats wonder if this is another of those areas of overlap between trade marks and other IP rights in which the careful attention of the courts may have to repair any possible damage done by insufficiently precise legislation in the first place.

The UK government will be pleased if you get in touch with the UK Intellectual Property Office to tell them what you think, so that they can get involved if necessary.  Just email policy@ipo.gov.uk by this Friday, 9 January 2015. That will give them plenty of ponder time, since the deadline for the UK to lodge observations with the Court of Justice is actually 5 March.