Opinion of the Advocate General — ECLI:EU:C:2017:730
Date: 2017-09-28
Language of the case: German;Italian
Subject matter: General provisions;Intellectual, industrial and commercial property;Approximation of laws;Designs
Procedure: Reference for a preliminary ruling
Origin: Germany;Italy

summary, in order to benefit from the exception laid down in Article 110(1) of Regulation No 6/2002, the component part must be used ‘for the purpose of the repair of the complex product’, which excludes any use of a component part for reasons of preference or purely of convenience, and ‘so as to restore its original appearance’, which implies that the replacement part must have an identical appearance to that of the part originally incorporated into the complex product. D. The precautionary measures to be taken by a manufacturer or supplier of component parts of a complex product as regards compliance with the conditions of use laid down in Article 110(1) of Regulation No 6/2002 (the third question in Case C‑397/16 and the third and fourth questions in Case C‑435/16) 111. The third question in Case C‑397/16 and the third and fourth questions in Case C‑435/16 relate to the precautionary measures to be taken by a manufacturer or supplier of replacement parts who wishes to rely on Article 110(1) of Regulation No 6/2002 in order to ensure that those parts are used in accordance with the conditions of use laid down in that provision. (35) 112. It will be recalled that those conditions concern the use of the component part for the purpose of the repair of the complex product so as to restore its original appearance. (36) 113. I would observe that the wording of Article 110 of Regulation No 6/2002 does not refer specifically to the precautionary measures which manufacturers or suppliers may be required to take as regards compliance with the conditions of use. Consequently, it is for the Court to interpret that provision in order to determine the content of the measures which manufacturers or suppliers may be required to take if they wish to rely on the repair clause in order to preclude the exclusive rights of the design holder. 114. In that regard, it does not seem to be possible, contrary to what was submitted by Audi, Porsche and the German Government, to adopt a restrictive interpretation of the repair clause for the following reasons. 115. First, despite its wording, that clause does not constitute a transitional provision for the purposes of the case-law of the Court, that is to say, it is not a provision which is applicable for a limited period of time in order to facilitate the transition to definitive arrangements. (37) According to the wording of that clause, it is to apply ‘until such time as amendments to this Regulation enter into force on a proposal from the Commission’. However, this is also the case for all the other provisions of the Regulation, which are to apply, by their nature, until such time as they are amended on a proposal from the Commission. 116. In reality, and as pointed out by the Commission, the repair clause, which has been in force since 6 March 2002 under Article 111(1) of that regulation, is intended to apply indefinitely. 117. Secondly, the repair clause does not constitute a derogation from a fundamental principle of EU law, which could also justify a restrictive interpretation, but rather a provision which seeks to maintain the balance between legitimate yet competing interests, namely those of the design holders and those of third parties, in the context of the protection of designs. 118. As explained above, (38) the aim of the repair clause is to achieve extensive liberalisation of the market in replacement parts by preventing a design holder from exercising his exclusive rights in respect of the use of any replacement parts incorporating a design of which he is the holder for the duration of the use of the complex product. In establishing an exception from protection as a Community design, that clause helps to achieve a balance between the exclusive rights of design holders and the rights of third parties, by allowing the latter to use the designs held by the former for the purpose of the repair of a complex product. 119. Consequently, the interpretation of that clause must preserve the effectiveness of the extensive liberalisation sought by the EU legislature with regard to replacement parts. 120. The content of the precautionary measures which manufacturers or suppliers of component parts may be required to take must be determined in the light of those factors. The main difficulty in doing so lies in the fact that the activities of manufacturers or suppliers are downstream of the repair capable of coming within the scope of Article 110(1) of Regulation No 6/2002. In other words, those precautionary measures concern the conditions in which a component part will be used in the future and, most often, by third parties. 121. In that regard, the Court has suggested three approaches based, respectively, on guarantee, reporting or diligence requirements. I favour the latter of these approaches, which seems to be the most appropriate for preserving the effectiveness of the repair clause. 122. The first approach, based on an obligation of guarantee, consists of requiring manufacturers and suppliers to guarantee that the replacement parts which they manufacture or sell will be used ‘for the purpose of the repair of the complex product so as to restore its original appearance’. In my view, such an obligation of guarantee would excessively diminish the effectiveness of Article 110(1) of Regulation No 6/2002. 123. First, under such an obligation of guarantee, manufacturers and the suppliers would be compelled to offer replacement parts only if they could be certain, in advance, that those parts would be used in the abovementioned conditions. 124. Accordingly, Audi has proposed that replica wheel rim manufacturers be required to distribute their products only to auto repair shops and to ensure that those shops use the products exclusively for repair purposes. Porsche has suggested that the sale of replica wheel rims between manufacturers and dealers be prohibited since such sales involve quantities which are too large to be able to ascertain compliance with the aforementioned provision. I would add that a manufacturer may not even be permitted to manufacture a replica wheel rim unless it had been duly established that a repair was required. 125. However, such restrictions on the commercial activities of manufacturers and suppliers of component parts would have the effect of limiting their access to the market in replacement parts, which is contrary to the liberalisation objective pursued by Article 110(1) of Regulation No 6/2002. First of all, Audi’s proposal disregards the possibility of repairs being made outside of auto repair shops, in particular by the end user himself. Moreover, under Porsche’s proposal, it would not be permitted for replica wheel rims to be sold by dealers, who represent an important commercial outlet. Finally, manufacturing replica wheel rims only when specifically required would lead to the loss of economies of scale for manufacturers and delays in the supply of those wheel rims, thereby benefiting the original wheel rims sold by the design holders. 126. Secondly, such an obligation of guarantee would mean that manufacturers and suppliers would be responsible for the actions of all actors down the distribution chain, including the end users. Therefore, manufacturers and suppliers could be held responsible if the end users of the replica wheel rims were to use them out of preference. In that regard, Acacia and the Commission have rightly submitted that it would be disproportionate to require a manufacturer or supplier of component parts to put in place a system to monitor the activities both of upstream commercial operators and of end users. 127. I would add that it still possible for the design holder to enforce his rights against the user concerned if the holder considers that the conditions of use laid down in Article 110(1) of Regulation No 6/2002 have not been fulfilled. 128. For those reasons, I consider that manufacturers and suppliers should not be required to provide a guarantee that the replica parts they manufacture will be used in accordance with the aforementioned conditions. 129. The second approach proposed to the Court consists of imposing on manufacturers and suppliers of spare parts the obligation to obtain a declaration from the customer to the effect that he will not use the part for any purpose other than that provided for in Article 110(1) of Regulation No 6/2002. (39) 130. Such an approach seems excessively rigid inasmuch as it would prevent manufacturers and suppliers from using other precautionary measures which may be appropriate in the context of their activities. Moreover, the effectiveness of that approach is questionable. It is quite conceivable that a manufacturer or a supplier might formally obtain that declaration in the knowledge that the customer will not, in fact, use the part in accordance with the conditions laid down in that provision. 131. The third approach, set out by the Italian Government and the Commission, is based on a duty of diligence as regards compliance by downstream users with the conditions of use laid down in Article 110(1) of Regulation No 6/2002. I favour that approach, which is, in my view, the most appropriate for preserving the practical effect of the extensive liberalisation of the market in replacement parts sought by the EU legislature. However, it should be made clear what such an obligation implies in practice. 132. In my opinion, a diligent manufacturer or supplier should inform the customer, on the one hand, that the component part concerned incorporates a design of which that manufacturer or supplier is not the holder, and on the other, that the part is intended exclusively to be used for the purpose of the repair of the complex product so as to restore its original appearance. 133. I note, in that regard, that the Court has already held that Article 14 of Directive 98/71 and Article 110 of Regulation No 6/2002 do not allow, by way of derogation from the provisions of EU law on trade marks, a manufacturer of replacement parts to affix to its products a trade mark registered by a car manufacturer, without obtaining the latter’s consent. (40) Therefore, a third party manufacturer — such as Acacia — may not create confusion between its replica parts and the original parts manufactured by the design holder — such as Audi or Porsche — by affixing to its products a trade mark held by the design holder. 134. Moreover, the manufacturer or supplier must have the opportunity to demonstrate that they have fulfilled that obligation to provide information through any means of proof provided for in national law. Such proof may include, but not be limited to, a signed declaration from the customer such as that referred to in the context of the second approach, or a clause inserted into the sales contract. 135. That obligation to provide information is not, however, sufficient to fulfil the duty of diligence. A diligent manufacturer or supplier must also refrain from selling a component part where he knows, or has reasonable grounds to know, that the part in question will not be used in accordance with the conditions laid down in Article 110(1) of Regulation No 6/2002. 136. I note that both the Court (41) and the EU legislature (42) have used similar conditions in the field of intellectual property. 137. In summary, I consider that, in order to rely on the repair clause, the manufacturer or supplier of a component part of a complex product must fulfil a duty of diligence as regards compliance by downstream users with the conditions of use laid down in Article 110(1) of Regulation No 6/2002. That duty of diligence requires, on the one hand, that the manufacturer or supplier must inform the customer that the component part concerned incorporates a design of which the manufacturer or supplier is not the holder and that the part is intended exclusively to be used in accordance with the conditions set out in that provision and, on the other hand, that the manufacturer or supplier loses the right to rely on that article if he knew, or had reasonable grounds to know, that the part in question would not be used in accordance with those conditions. VI. Conclusion 138. In the light of the foregoing, I propose that the Court give the following answers to the questions referred to it for a preliminary ruling by the Corte d’appello di Milano (Court of Appeal, Milan, Italy) and the Bundesgerichtshof (Federal Court of Justice, Germany): (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 concept of a ‘component part of a complex product’ is not limited to component parts whose shape is determined by the appearance of the complex product, but covers any product which is incorporated into another product where the latter is classed as a ‘complex product’ which can be removed and replaced, which is necessary for the purposes of the normal use of the complex product and which remains visible during the normal use of the complex product. (2) In order to benefit from the exception laid down in Article 110(1) of Regulation No 6/2002, the component part must be used ‘for the purpose of the repair of the complex product’, which excludes any use of a component part to suit a personal preference or purely for the sake of convenience, and ‘so as to restore its original appearance’, which implies that the replacement part must have an identical appearance to that of the part originally incorporated into the complex product. (3) In order to rely on that exception, the manufacturer or supplier of a component part of a complex product must fulfil a duty of diligence as regards compliance by downstream users with the conditions of use laid down in Article 110(1) of Regulation No 6/2002. That duty of diligence requires, on the one hand, that the manufacturer or supplier must inform the customer that the component part concerned incorporates a design of which the manufacturer or supplier is not the holder and that the part is intended exclusively to be used in accordance with the conditions set out in that provision and, on the other hand, that the manufacturer or supplier loses the right to rely on that article if he knew, or had reasonable grounds to know, that the part in question would not be used in accordance with those conditions. 1 Original language: French. 2 OJ 2002 L 3, p. 1. 3 Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs (OJ 1998 L 289, p. 28). 4 See points 92 and 93 of this Opinion. 5 See points 97 to 110 of this Opinion. 6 Proposal for a European Parliament and Council Regulation on the Community Design (COM(93) 342 final, pp. 24 and 25). 7 The principle of the exhaustion of the exclusive rights of the holder is also one of the tenets of patent, copyright and trade mark protection. See inter alia Article 29 of the Agreement on a Unified Patent Court (OJ 2013 C 175, p. 1); Article 4(2) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10), and Article 15 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1). 8 See points 71 to 78 of this Opinion. 9 According to Porsche, the following decisions excluded car wheel rims from the scope of the repair clause: judgment of the Tribunal de Commerce de Bruxelles (Brussels Commercial Court, Belgium), No A/12/05787 of 16 February 2015; judgement of the Højesteret (Supreme Court, Denmark), No 17/2010 of 10 March 2015; Landgericht Hamburg (Regional Court, Hamburg, Germany), GRUR-RS 2015, p. 16872; Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany), GRUR-RR 2016, p. 228; Audiencia Provincial de Alicante (Provincial Court, Alicante, Spain), judgment No 437/10 of 18 June 2010; Tribunale di Bologna (District Court, Bologna, Italy), judgment No 4306/2011 of 17 December 2013; Tribunale di Milano (District Court, Milan, Italy), judgment No 3801/2013 of 27 November 2014; Court of Helsinki, Finland, judgment No 15/149362, 19 November 2015, case file No R14/5257; Svea Hovrätt (Court of Appeal, Svea, Sweden), judgment of 29 January 2016, case file No Ö 8596-17. 10 According to Acacia, the following decisions included car wheel rims within the scope of application of the repair clause: Tribunale di Napoli (District Court, Naples, Italy), 11 November 2009, RG 35034/079; Tribunale della Spezia (District Court, La Spezia), 21 September 2010, No 66/10/18; Tribunale della Spezia (District Court, La Spezia), 29 September 2010, Proc. 75/2010 Mod. 18; Tribunale di Napoli (District Court, Naples), 11 February 2011, No 5001/2011; Tribunale di Milano (District Court, Milan), 11 June 2012, RG 24209/12; Tribunale di Milano (District Court, Milan), 11 October 2012, RG 46317/12; Corte d’appello di Napoli (Court of Appeal, Naples, Italy), 25 September 2013, No 3678/2013. 11 See points 16 and 24 of this Opinion. 12 Proposal for a European Parliament and Council Regulation on the Community Design (OJ 1994 C 29, p. 20). 13 Proposal for a European Parliament and Council Directive on the legal protection of designs (OJ 1993 C 345, p. 14). 14 ‘Article 23 — Use of a Registered Community Design for repair purposes The rights conferred by a Registered Community Design shall not be exercised against third parties who, after three years of the first putting on the market of a product incorporating the design or to which the design is applied, use the design under Article 21, provided that: (a) the product incorporating the design or to which the design is applied is part of a complex product upon whose appearance the protected design is dependent; (b) the purpose of such a use is to permit the repair of the complex product so as to restore its original appearance; and (c) the public is not misled as to the origin of the product used for the repair.’ (Emphasis added). 15 ‘Article 14 — Transitional provision Until such time as amendments to this Directive are adopted on a proposal from the Commission in accordance with the provisions of Article 18, Member States shall maintain in force their existing legal provisions relating to the use of the design of a component part used for the purpose of the repair of a complex product so as to restore its original appearance and shall introduce changes to those provisions only if the purpose is to liberalise the market for such parts.’ 16 Amended proposal for a Council Regulation (EC) on Community Design (OJ 2000 C 248E, p. 3). 17 ‘Article 10a — Transitional provision 1. Until such time as amendments to this Regulation are adopted on a proposal from the Commission on this subject, a Community design shall not exist in a design applied to or incorporated in a product, which constitutes a component part of a complex product upon whose appearance the design is dependent. 2. The proposal from the Commission, referred to in paragraph 1, shall be submitted together with, and take into consideration, any changes which the Commission shall propose on the same subject pursuant to Article 18 of Directive 98/71/EC on the legal protection of designs.’ (Emphasis added). 18 See of the Report from the Presidency to the Permanent Representatives Committee (Coreper), No 12420/2000, of 19 October 2000, paragraph 6 (available at: http://data.consilium.europa.eu/doc/document/ST‑12420-2000-INIT/en/pdf): ‘The great majority of delegations called for the wording of Article 10a and recital 13 to be more closely aligned on Article 14 of the Directive, since the text proposed by the Commission was likely to exclude from protection more component parts than those referred to in the latter Article’. See also page 2 of the Report from the Presidency to the Coreper, No 8107/2000, of 5 May 2000, available at http://data.consilium.europa.eu/doc/document/ST‑8107-2000-INIT/en/pdf 19 Report from the Presidency to the Coreper No 12420/2000, of 19 October 2000, paragraph 9. 20 Report from the Presidency to the Coreper No 12420/2000, of 19 October 2000, pages 9 to 11. 21 Pages 1 and 2 of the Note from the Presidency to the Working Party on Intellectual Property (Designs), No 12811/2000, of 27 October 2000, available at http://data.consilium.europa.eu/doc/document/ST‑12811-2000-INIT/en/pdf 22 See point 38 of this Opinion. 23 Report from the Presidency to the Coreper No 12420/2000, of 19 October 2000, page 11. 24 See points 60 and 61 of this Opinion. Note from the Presidency to the Working Party on Intellectual Property (Designs), No 12811/2000, of 27 October 2000. 25 See, inter alia, pages 6 and 9 of the Report from the Presidency to the Coreper, No 13103/2000, Permanent Representatives Committee, 9 November 2000, pp 6 and 9, available at http://data.consilium.europa.eu/doc/document/ST‑13103-2000-INIT/en/pdf; Report from the Presidency to the Permanent Representatives Committee, No 13641/2000, of 21 November 2000, pp. 4 and 6 (available at http://data.consilium.europa.eu/doc/document/ST‑13641-2000-INIT/en/pdf); and Report from the Presidency to the Council (Internal Market, Consumers and Tourism), No 13749/2000, of 24 November 2000, p. 7, available at http://data.consilium.europa.eu/doc/document/ST‑13749-2000-INIT/en/pdf 26 See footnote 18. 27 See point 57 of this Opinion. 28 See, inter alia, the judgment of 14 December 2006, Nokia (C‑316/05, EU:C:2006:789, paragraph 21), concerning the interpretation of the term ‘special reasons’ in the first sentence of Article 98(1) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1). 29 See point 49 of this Opinion. 30 I note, in that regard, that the requirement relating to the repair of the complex product implies that the component part must be necessary for the normal use of that product. See point 89 of this Opinion. 31 See point 91 of this Opinion. 32 See points 13 and 19 of this Opinion. 33 The Court has already held that Article 110 of Regulation No 6/2002 does not permit a manufacturer of spare parts, such as Acacia, to affix [to its products] a trade mark registered by a car manufacturer without the consent of that car manufacturer. See point 133 of this Opinion. 34 See points 48 to 83 of this Opinion. 35 As regards the broad definition of the concept of ‘use’ given in Article 19(1) of Regulation No 6/2002, manufacturing or selling a product in which a design is incorporated, or to which it is applied, and stocking the product for those purposes, without the consent of the design holder, infringe the exclusive rights of the latter. 36 I note, in that regard, that compliance with the first of the conditions examined in the previous section, relating to the existence of a component part of a complex product, does not depend on the adoption of precautionary measures by the manufacturer or supplier, but only on the objective characteristics of the product at issue, set out in point 92 of the present Opinion. 37 The Court has interpreted such transitional clauses in, inter alia, the judgments of 23 March 1983, Peskeloglou (77/82, EU:C:1983:92, paragraphs 11 and 12); of 5 December 1996, Merck and Beecham (C‑267/95 and C‑268/95, EU:C:1996:468, paragraphs 23 and 24); and of 12 June 2008, Commission v Portugal (C‑462/05, EU:C:2008:337, paragraphs 53 and 54). 38 See points 43 to 47 and points 71 to 78 of this Opinion. 39 There is a particular reference to that approach in the fourth question raised in Case C‑435/16. 40 Order of 6 October 2015, Ford Motor Company (C‑500/14, EU:C:2015:680). 41 See, inter alia, in a different context, judgment of 8 September 2016, GS Media (C-160/15, EU:C:2016:644). The Court held that the fact of posting, on a website, hyperlinks to protected works which are freely available on another website without the consent of the copyright holder does not constitute a ‘communication to the public’ within the meaning of Article 3(1) of Directive 2001/29 where those links are provided without the pursuit of financial gain by a person who did not know or could not reasonably have known the illegal nature of the publication of those works. Although that judgment cannot be directly applicable to the present cases, I note that the Court used a criterion analogous to that which I am suggesting. 42 See Article 13(1) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45), which indicates that: ‘Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him as a result of the infringement. ...’ (emphasis added). See also Article 4(4) of Directive (EU) 2016/943 of the European Parliament and of the Council of 8 June 2016 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure (OJ 2016 L 157, p. 1), which mentions that: ‘The acquisition, use or disclosure of a trade secret shall also be considered unlawful whenever a person, at the time of the acquisition, use or disclosure, knew or ought, under the circumstances, to have known that the trade secret had been obtained directly or indirectly from another person who was using or disclosing the trade secret unlawfully within the meaning of paragraph 3’ (emphasis added).