Court of Justice of the European Union renders judgment in Audi case regarding the use of a trademark in spare parts

Audi initiated legal action against GQ for selling non-original parts that resembled or partially replicated the Audi trademark. GQ contested the claims, citing a practice of motor vehicle manufacturers whereby they do not object to the sale of non-original radiator grilles incorporating an element designed for the attachment of the emblem representing their brand.

The case was referred to the Court of Justice of the European Union (“CJEU”) to determine, amongst others, whether selling radiator grilles that include a feature for attaching the manufacturer's emblem constitutes trademark infringement. Central questions include whether a trademark serves its purpose of indicating origin when it is part of the spare part, and whether a sign that is a component designed to attach the manufacturer's emblem to those parts, infringes the trademark.

First, the CJEU confirmed that the radiator grilles in question were not sourced from the proprietor of the trademark and had been introduced to the market without Audi’s consent. Moreover, as the trademark is visible to the public wishing to purchase the spare part, a material link between the spare part and Audi is created. Therefore, such use may infringe the trademark, as the function of guaranteeing the origin or quality of the goods is infringed.

In that respect, the CJEU concludes that although the design of the radiator grilles is guided by the desire “to market a radiator grille which resembles the original radiator grille as closely as possible”, this does not limit the exclusive rights of the manufacturer. Consequently, the trademark proprietor can oppose the sale of spare parts where the sign included in the spare part consists of the emblem representing a trademark. Last, the question whether or not there is a technical possibility of attaching the emblem to the spare part without affixing an identical or similar sign to it, is irrelevant.

Of course, it remains for the national courts to ascertain whether the sign used by QC is identical or similar to the trademark and whether the radiator grille is identical to one or more of the goods for which the trademark has been registered.