Taking A Second Look At Trademark Limits After Audi

How Function Turned Into Monopoly? Taking A Second Look At Trademark Limits After Audi VS. GQ Presented by: Mrs. Kur Date: 7th November 2024 Basics - Trade marks are IP rights (or at least there is general consensus to call them so) - But… - The conditions and scope of protection are essentially shaped by their role of enabling and maintaining undistorted competition • Interpretation of tm provisions losing sight of that precept produces flawed results • UK courts and scholarship could be trusted to wave the red flag when CJEU jurisprudence tended to prioritize the proprietary character of tm law over competitive concerns • That corrective could be missing now An Exemplary Case? - In C-322/24- Audi v GQ, the CJEU was asked whether importing and marketing a radiator grille with a device permitting attachment of the Audi logo • fell within Art. 14(1)(c) EUTMR (use to indicate purpose), and if so, whether it was compatible with honest practices; • was infringing in the meaning of Art. 9(2) EUTMR AG Opinion - AG Medina had denied infringement under Art. 9 EUTMR • Due to its functional character (indispensability of the shape for serving its purposes) the item was considered excluded from trade mark protection • The result was considered to have been confirmed by a previous (independently conducted) academic study showing that the relevant public - i.e., professional dealers - were not confused as to origin • While recognizing that the design law repairs clause does not apply per analogism in tm law, denying infringement was said to reflect "a consistent and practicable interpretation of all areas of intellectual property law" in order to ensure "that the emergence of monopolies is prevented and that the interest of consumers in being able to obtain goods and services from many different sources is protected", - Art. 14(1)(c) EUTMR (which was only considered alternatively, in the case that the CJEU should confirm infringement) was considered inapplicable The CJEU's answer - 1. Article 9(2) and (3)(a) to (c) [EUTMR] • Must be interpreted as meaning that a third party who, without the consent of the manufacturer of motor vehicles which is the proprietor of an EU trade mark, imports and offers for sale spare parts... containing an element which is designed for the attachment of the emblem representing that trade mark ... is using a sign in the course of trade in a manner liable to affect one or more of the functions of that trade mark, which is a matter for the national court to ascertain. - 2. Article 14(1)(c) [EUTMR] • Must be interpreted as meaning that it does not preclude the manufacturer of motor vehicles which is the proprietor of an EU trade mark from prohibiting a third party from using a sign identical with, or similar to, that trade mark in relation to spare parts for those motor vehicles...where that sign consists of the shape of an element of the radiator grille designed for the attachment thereto of the emblem representing that trade mark, regardless of whether or not there is a technical possibility of attaching that emblem to the radiator grille without affixing that sign to it. Comment - While the CJEU is right to point out that • The case was not about whether the item could attract tm protection • The design law repair clause does not apply by analogy, - There is no reasonable explanation why the CJEU • Remained silent about the study addressed by the AG, and the impact it might have for the decision, • Discarded any consideration of the legitimacy and desirability of competition on the aftermarket as undue attempt to apply the repairs clause by analogy, instead of weighing the argument of consistency brought forth by the AG, • Precluded the application of Art. 14(1)(c) EUTMR for good. A Bad Omen for the Future? - Does Audi indicate a new era of rigid, proprietor-centered interpretation of EU trade mark law, being unable or unwilling to recognize its inherent limitations as part of a larger system geared towards efficient competition and other policy goals? - We'll see...