The design of a car, it’s overall appearance are one of the most important things helping to draw one’s attention and distinguish the car from other models of cars supplied on the market. Car manufacturers invest enormous amounts of money in development of the design; thus, it is not surprising that it is expected that at least a part of such investment would be paid back through sale of genuine spare parts aimed at restoring the original appearance of a car after an accident. The car repair costs make a major part of car maintenance costs. Thus, in order to save money, car owners often choose not the genuine spare parts, but significantly cheaper spare parts sold by manufacturers of spare parts. However, doesn’t automotive repair companies risk infringing the rights of the manufacturers of genuine spare parts to the Community design? Numerous debates on this subject have taken place so far.
The general principle that the Community law does not provide protection for spare parts has prevailed. Thus, Article 110 (1) of the Regulation on the Community design sets forth the so-called “repair clause”, i.e. protection as a Community design shall not be applicable to a design which constitutes a component part of a complex product used for the purpose of repair of that complex product so as to restore its original appearance. This clause applies to such spare parts that are component parts of a complex product, but is not applied when the spare part per se is registered as an independent Community design subject not only to the requirements of novelty and particularity, but also to the requirements of visibility of such spare part to the consumer in normal use.
The “repair clause” has not been established in the national legislation of all EU Member States (for example, Design law of the Republic of Lithuania does not provide such clause); furthermore, the case-law concerning application of such clause throughout the European Union also has not been established so far; therefore, national courts of the Member States still face problems in interpretation and application of the provisions concerning the “repair clause”.
The case No C-500/14 instituted by Ford Motor Company against Wheeltrims srl. in which the Court of Justice of the European Union (CJEU) delivered a final judgement on 6 October 2015 could be mentioned as one of such cases. According to the data of the case, Ford as a manufacturer of cars, accessories and spare parts thereof labels its products by an oval sign containing the entries Ford registered for cars, spare parts and accessories including wheel covers. The trademark has also been used by Ford for marking of wheel covers installed on the car rims manufactured by it. Wheeltrims which is a supplier of automotive spare parts were selling the wheel covers bearing an identical copy of the trademarks of different car manufacturers including the trademark Ford without consent of Ford. Furthermore, this company manufactures and sells the wheel covers not designated by any trademark the price of which is lower than the price of wheel covers with the manufacturer’s trademark.
Tribunale di Torino (District Court of Turin) that has applied to the CJEU for interpretation believed that such actions of Wheeltrims infringe the rights granted by the trademark Ford; nevertheless, it has faced some problems in interpretation of the afore-mentioned “repair clause”. The question has been raised whether, according to the afore-mentioned clause, a manufacturer of automotive spare parts and accessories is entitled to mark its goods by the sign identical to the trademark registered by the car manufacturer without consent of the proprietor of the trade mark on the ground that such use of the trademark is the only way of repairing the particular car restoring the original appearance of the car as a complex product.
The CJEU has decided that such marking is inadmissible. This implies that even if the use of non-genuine spare part does not infringe the rights to the design, such non-genuine spare part cannot be marked by the trademark without the proprietor’s consent.
It is also worth noting that not all automotive parts may be referred to as spare parts within the meaning of design law. The company of Great Britain Round and Metal Ltd which sold wheel rims registered as the Community design without consent of the German company BMW also became aware of this. According to the court, as a rule, copies of wheel rims which are being distributed by R & M are not used for repair of cars, but for improvement of cars; furthermore, the wheel rims are sold as sets; thus, such use of the design cannot be justified by the “repair clause”.