JURISDICTION REPORT: FRANCE
THE BATTLE OVER SPARE PARTS Aurélia Marie
Cabinet Beau de Loménie
In France, automotive spare parts can be protected by design rights or copyright if they meet the conditions for protection provided by the national laws, whereas they are no longer protectable in many European countries and cannot be protected by a Community design. However, in France this protection may be limited in some cases,
notably because of the ‘must fit’ rule, provided by Article L.511-4.2, which was introduced into French law when the European Designs Directive CE No. 98/71 (October 13, 1998) was implemented. For these reasons, car manufacturers have tried to find new solutions
for fighting against the copying of their spare parts and limiting spare parts suppliers from manufacturing and selling compatible products. Tey also remain very vigilant about the use of their trademarks by the
spare parts suppliers and react when this use is not strictly in conformity with the law. In this context, the Court of Turin in Italy filed on November 10, 2014
a request for a preliminary ruling in a case involving car manufacturer Ford and Italian parts supplier Wheeltrims, which was selling spare parts with trademarks owned by Ford affixed to them without its authorisation. Tis dispute seems at first glance to raise the old question concerning
the use of the original trademark in relation to spare parts and accessories when they are not manufactured by the constructor itself. We know that such reproduction is considered to be trademark
infringement when it occurs without the consent of the owner and when this use is not necessary for informing the consumer about the destination of the goods. However, in the present case, Ford was affixing its trademark to its
own spare parts itself and, as a result, the Italian company had been reproducing the trademark on the compatible products so that they would be identical to the original ones, and the vehicle, when the spare part is installed, would keep its original appearance. Terefore, it seems hard in such a case to find a compromise that
maintains competition on the market between the spare parts suppliers, which are willing to offer spare parts and accessories to the consumer, and the exclusive rights of the IP right owner. Article 14 of the European Designs Directive, the so-called repair
clause, defines the replacement part as “a part of a complex product, used for the purpose of the repair of that complex product in order to restore its original appearance”. Article 110 of the Community Design regulation gives a similar definition. However, the European authorities did not define the conditions of
application of these provisions, which only exclude any protection as a Community design on these parts and forbid member states from amending existing national provisions, except for the purpose of market liberalisation.
78 World Intellectual Property Review May/June 2015
Te problem in the present case goes beyond the issue of the interpretation of articles 14 and 110 of
the directive and regulation
respectively. It also concerns the question of whether trademark law, like design law, can be defeated, on the ground that the spare part must conform to the original. Te CJEU has then been asked whether it is compatible with EU law
for producers of replacement parts and accessories to use third party trademarks to allow end purchasers to restore a complex product’s original appearance when the trademark is affixed to the part and externally visible, and therefore contributes to the external appearance of the complex product. Te question is therefore whether in such a situation there can be
derogation from the rules laid down in the EU Council Regulation No. 207/2009 and Directive No. 2008/95/EC on trademarks. Te potential economic impact of the decision that the CJEU will
render is obviously very important and there is no doubt that this issue will be closely watched by all operators in the market.
Aurélia Marie is a partner at Cabinet Beau de Loménie. She can be contacted at:
amarie@bdl-ip.com
www.worldipreview.com
“THE CJEU HAS NOW BEEN ASKED WHETHER IT IS COMPATIBLE WITH EU LAW FOR PRODUCERS OF REPLACEMENT PARTS AND ACCESSORIES TO AFFIX THIRD PARTY TRADEMARKS ON THE PRODUCTS.”
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100