Bentley and Aston Martin failed against a Japanese trademark application

The Japan Patent Office dismissed an opposition filed by BENTLEY MOTORS и ASTON MARTIN against the following Japanese trademark application for Class 12:

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This mark is used by Toyota and Tsuburaya ( company responsible for the creation of the Ultraman superhero) for advertisement purposes.

The earlier marks specified in the opposition were:

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According to the Patent Office, there was no possibility for consumer confusing despite the fact that the earlier marks had a reputation on the market. The marks were phonetically, visually and conceptually different according to the Office. The graphical resemblance wasn’t sufficient. What’s more this conclusion was supported by the fact that Bentley’s and Aston Martin’s marks coexisting for many years without to create any confusion.

Source:  Masaki Mikami.

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Design, replica spare parts, wheel rims and an EU Court decision

automotive-1727409_960_720The European Court ruled out in joined cases C‑397/16 and C‑435/16Acacia Srl Audi AG. These cases concern the following:

Case C397/16

Audi is the holder of a number of Community designs of alloy car wheel rims.

Acacia manufactures, under the brand WSP Italy, alloy car wheel rims that are sold on its own website, which is available in several languages. According to the referring court, some of those wheel rims are identical to Audi’s alloy wheel rims. The wheel rims manufactured by Acacia are stamped with the indication ‘NOT OEM’, which means not made by the original equipment manufacturer. The commercial and technical documents accompanying those products, the sales invoices and Acacia’s internet site indicate that the wheel rims at issue are sold exclusively as replacement parts for the purpose of making repairs.

Audi brought an action before the Tribunale di Milano (District Court, Milan, Italy) seeking, in essence, a declaration that Acacia’s manufacture and sale of the wheel rims at issue constitutes an infringement of its Community designs. That court upheld that action.

Acacia brought an appeal against that court’s judgment before the Corte d’appello di Milano (Court of Appeal, Milan, Italy). That court, after noting inter alia the existence of conflicting rulings from Italian courts and courts of other Member States concerning the application of the ‘repair’ clause, held that there were serious doubts as to the interpretation of Article 110(1) of Regulation No 6/2002.

In those circumstances, the Corte d’appello di Milano (Court of Appeal, Milan) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Do [i] the principles of the free movement of goods and of the freedom to provide services within the internal market, [ii] the principle of the effectiveness of EU competition law and of the liberalisation of the internal market, [iii] the principles of effet utile and of the uniform application within the European Union of EU law and [iv] the provisions of secondary EU law, such as Directive 98/71, and in particular Article 14 thereof, Article 1 of [Commission Regulation (EU) No 461/2010 of 27 May 2010 on the application of Article 101(3) of the Treaty on the Functioning of the European Union to categories of vertical agreements and concerted practices in the motor vehicle sector (OJ 2010 L 129, p. 52)] and Regulation [No 124 of the Economic Commission for Europe of the United Nations (UN/ECE) — uniform provisions concerning the approval of wheels for passenger cars and their trailers (OJ 2006 L 375, p. 604, and corrigendum OJ 2007 L 70, p. 413)], preclude an interpretation of Article 110 of Regulation No 6/2002, which contains the repair clause, that excludes replica wheels aesthetically identical to original equipment wheels and approved on the basis of UNECE Regulation No 124 from the definition of a ‘component part of a complex product’ (that complex product being a motor vehicle) for the purpose of the repair of that complex product and the restoration of its original appearance?

(2) In the event that the first question is answered in the negative, do the rules on exclusive industrial rights in respect of registered designs, regard being had to the balancing of the interests referred to in the first question, preclude the application of the repair clause to replica complementary products that may be selected freely by the customer, on the basis that the repair clause is to be interpreted restrictively and may be relied upon only with respect to spare parts that come in one particular form only, that is to say, component parts the form of which has been determined in practically immutable fashion with respect to the external appearance of the complex product, to the exclusion of component parts that may be regarded as interchangeable and that may be applied freely, in accordance with the customer wishes?

(3)  In the event that the second question is answered in the negative, what steps must a manufacturer of replica wheels take in order to ensure the free movement of products the intended use of which is the repair of a complex product and the restoration of its original appearance?’

Case C435/16

Porsche is the holder of a number of Community designs of alloy car wheel rims.

The wheel rims manufactured by Acacia, referred to in paragraph 12 of the present judgment, are sold, in Germany, on its internet site, which is directed at end consumers and is accessible in German. According to the referring court, some of those wheel rims are identical to Porsche’s alloy wheel rims. That court observes that, according to Acacia, the rims it manufactures and which are intended for Porsche vehicles can be used only with Porsche vehicles. Porsche submits to that court that the rims in question are also offered in colours and sizes which do not correspond to the original products.

Porsche brought an action before the Landgericht Stuttgart (Regional Court, Stuttgart, Germany) seeking, in essence, a declaration that Acacia’s manufacture and sale of the wheel rims at issue constitutes an infringement of its Community designs. That court upheld that action.

As the appeal brought by Acacia and Mr D’Amato was dismissed, they brought an appeal on a point of law (Revision) before the referring court. That court notes that the outcome of the appeal on a point of law depends on whether Acacia may rely on the ‘repair’ clause in Article 110(1) of Regulation No 6/2002. However, the interpretation of that provision raises several difficulties.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited to fixed shape parts, namely those parts whose shape is in principle immutably determined by the appearance of the product as a whole and cannot therefore be freely selected by the customer, such as rims for motor vehicles?

(2)  If Question 1 is answered in the negative: Is the application of the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 limited only to the supply of products of an identical design, which thus correspond also in colour and size to the original products?

(3)  If Question 1 is answered in the negative: Does the bar to protection as provided for in Article 110(1) of Regulation (EC) No 6/2002 apply in favour of the supplier of a product that fundamentally infringes the design at issue only if this supplier objectively ensures that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole?

(4)  If Question 3 is answered in the affirmative: Which measures must the supplier of a product that fundamentally infringes the design at issue take in order to objectively ensure that his product can be purchased exclusively for repair purposes and not for other purposes as well, such as the upgrading or customisation of the product as a whole? Is it enough:

(a)  that the supplier includes a note in the sales brochure to the effect that any sale takes place exclusively for repair purposes so as to restore the original appearance of the product as a whole; or

(b)  is it necessary that the supplier make delivery conditional on the customer (traders and consumers) declaring in writing that the product supplied is to be used for repair purposes only?’

By decision of the President of the Court of 25 April 2017, Cases C‑397/16 and C‑435/16 were joined for the purposes of the oral part of the procedure and the judgment.

The Court decision is:

1. Article 110(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs must be interpreted as meaning that the ‘repair’ clause in it does not make the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the protected design is dependent upon the appearance of the complex product.

2. Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that the ‘repair’ clause in it makes the exclusion of protection as a Community design for a design which constitutes a component part of a complex product which is used for the purpose of the repair of that complex product so as to restore its original appearance subject to the condition that the replacement part must have an identical visual appearance to that of the part which was originally incorporated into the complex product when it was placed on the market.

3. Article 110(1) of Regulation No 6/2002 must be interpreted as meaning that, in order to rely on the ‘repair’ clause contained in that provision, the manufacturer or seller of a component part of a complex product are under a duty of diligence as regards compliance by downstream users with the conditions laid down in that provision.