Spare Parts and Repair Services Decisions of Courts in Europe

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1 Spare Parts and Repair Services Decisions of Courts in Europe Leopold von Gerlach Brussels, 29 January 2016

2 Decisions of the European Court of Justice C - 238/87 VOLVO C - 53/87 Maxicar / Renault C - 63/97 BMW / Deenik C - 206/01 Arsenal C - 228/03 Gillette C - 48/05 Adam Opel / Autec C - 487/ 07 L Oreal / Bellure 2

3 Vacuum cleaner bag trade mark law German Federal Court of Justice, 2005 Compatible vacuum cleaner bags were advertised "fitting with VORWERK KOBOLD 130" The use of the original brand name - necessary to explain the compatibility - does not violate honest trade practices even if instances of confusion may occur 3

4 Big inspection for everybody trade mark law German Federal Court of Justice, 2011 Use of the "VW" emblem in advertisements for repair services Device mark must not be used for third party advertising - if use of word mark interfered less strongly with the interest of trade mark owner 4

5 BMW-Emblem trade mark law German Federal Court of Justice, 2015 Use of BMW trade mark on badges to be sticked on other spare parts The trademark is the sole feature of the badge; as such the trade mark is not used "for" a spare part but is the spare part itself. Such trade mark use does not benefit from the privilege for replacement parts 5

6 Repackaging of spare parts trade mark law Higher Regional Court Hamburg, 2001 The importer of third party spare parts removed the packaging bearing the original trademark and re-packed the spare parts in neutral packaging. The repacking of the spare parts cannot reverse the infringement that occured already at the time of import. The initial packaging was trademark infringing as it used the trademark without additional words like "fitting with" or "suitable for". 6

7 Vacuum cleaner bag comparative advertising German Federal Court of Justice, 2015 Vacuum cleaner bags were advertised with reference to the well known trade mark: "similar to SWIRL" No unfair exploitation of reputation by using a well known trade mark for comparative advertising in an offer for sale on the internet even if this aimes at raising attention to own products 7

8 Tuning comparative advertising German Federal Court of Justice, 2015 Motor vehicle tune-ups were advertised by referring also to the car brand: "Porsche 911 with TECHART adjustmetns" The reference to the car brand is permissible as long as it is clear that it only refers to the vehicle in its original state 8

9 Wheel rims design law District Court of Dusseldorf, 2013 Distribution of wheel rims in Germany, manufactured by an Italian company - alleged infringement of a national registered design Repair clause under European design law (Art. 110 CDR) is not applicable as defence against claims of infringement of a German design right 9

10 Wheel rims design law Higher Regional Court of Stuttgart, 2014 Distribution of wheel rims in Germany, manufactured by an Italian company - alleged infringement of a community design Art. 101 CDR only applies in case of repair, which does not include the delivery of a set of four wheel rims Wheel rims do not represent "designs which constitute a component part of a complex product" and therefore do not fall within the scope of Art. 101 CDR 10

11 Nintendo remote control design law Higher Regional Court Dusseldorf, 2016 Offer of Nintendo-compatible remote control and use of Nintendo's design protected products on website as reference product for the remote control. Questions referred to the European Court of Justice: 1. Is it permissible to display a design protected product (game console) in order to advertise a compatible accesoire product (remote control). 2. Wich law is applicable on offers that are targeted to all European countries 11

12 Windows comparative advertisinht Supreme Court of Austria, 2011 Offer of windows as "suitable replacement for VELUX windows" reference to the trade mark of the market-leader s brand is unjustified, as a reference to windows of all kinds as well as custom made windows would have been sufficient 12

13 Aluminium wheel rims design and trade mark law - Supreme Court of Denmark, 2015 Use of aluminium wheel rims imitating the BMWdesign - and bearing the BMW trade mark. Aluminium wheel rims do not fall within the scope of Art. 101 CDR as they are used to decorate and upgrade the overall appearance. Wheel rims attached with the BMW trade mark infringe BMW's trade mark rights 13

14 Spare parts for vacuum cleaners trade mark law Supreme Court of Italy, 2014 Use of device mark placed on spare parts for vacuum cleaners. Device mark placed on the product is no indication for the product's intended purpose but rather an indication of its origin and thus a trade mark infringing use 14

15 hat Büros in: Alicante Amsterdam Baltimore Brüssel Budapest* Caracas Colorado Springs Denver Dschidda* Dubai Düsseldorf Frankfurt am Main Hamburg Hanoi Ho Chi Minh Stadt Hongkong Houston Johannesburg London Los Angeles Luxemburg Madrid Mailand Mexiko-Stadt Miami Minneapolis Monterrey Moskau München New York Northern Virginia Paris Peking Perth Philadelphia Riad* Rio de Janeiro Rom San Francisco São Paulo Schanghai Silicon Valley Singapur Sydney Tokio Ulaanbaatar Warschau Washington DC Zagreb* "" oder die "Sozietät" ist eine internationale Anwaltssozietät, zu der International LLP und US LLP und ihnen nahestehende Gesellschaften gehören. Die Bezeichnung "Partner" beschreibt einen Partner oder ein Mitglied von International LLP, US LLP oder einer der ihnen nahestehenden Gesellschaften oder einen Mitarbeiter oder Berater mit entsprechender Stellung. Einzelne Personen, die als Partner bezeichnet werden, aber nicht Mitglieder von International LLP sind, verfügen nicht über eine Qualifikation, die der von Mitgliedern entspricht. Weitere Informationen über, die Partner und deren Qualifikationen, finden Sie unter Sofern Fallstudien dargestellt sind, garantieren die dort erzielten Ergebnisse nicht einen ähnlichen Ausgang für andere Mandanten. Anwaltswerbung Alle Rechte vorbehalten. *Kooperationsbüros

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