Opinion of the Advocate General — ECLI:EU:C:2023:700
Date: 2023-09-21
Language of the case: Polish
Subject matter: General provisions;Trade marks;Intellectual, industrial and commercial property;Designs
Procedure: Reference for a preliminary ruling
Origin: Poland

Summary C-334/22 – 1 
Case C-334/22 
Summary of the request for a preliminary ruling pursuant to Article 98(1) of 
the Rules of Procedure of the Court of Justice 
Date lodged: 
23 May 2022 
Referring court: 
Sąd Okręgowy w Warszawie (Poland) 
Date of the decision to refer: 
25 February 2022 
Applicant: 
Audi AG 
Defendant: 
GQ 
  
Subject matter of the main proceedings 
Action by AUDI AG for infringement of exclusive rights to an EU trade mark. 
Subject matter and legal basis of the request 
Interpretation of Article 14(1)(c) and Articles 9(2) and 9(3)(a) of Regulation (EU) 
2017/1001 of the European Parliament and of the Council of 14 June 2017 on the 
European Union trade mark (‘Regulation 2017/1001’) – legal basis: Article 267 
TFEU.  
Questions referred for a preliminary ruling 
1. Under Article 267 [TFEU, the referring court decides to] refer a question to the 
Court of Justice […] for a preliminary ruling: 
(a) Must Article 14(1)(c) of Regulation (EU) 2017/1001 of the European 
Parliament and of the Council of 14 June 2017 on the European Union trade mark 
EN 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-334/22 
 
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be interpreted as precluding the trade mark proprietor / court from prohibiting a 
third party from using in the course of trade a sign which is identical or 
confusingly similar to an EU trade mark, in relation to automotive spare parts 
(radiator grilles) where that sign constitutes a mounting element for an automotive 
accessory (an emblem reflecting the EU trade mark), and: 
- where it is technically possible to affix the original emblem reflecting the 
EU trade mark to an automotive spare part (radiator grille) without reproducing on 
that part a sign identical or confusingly similar to the EU trade mark; 
or in a situation 
- where it is technically impossible to affix the original emblem reproducing 
the EU trade mark to an automotive spare part (radiator grille) without 
reproducing on that part a sign identical or confusingly similar to the EU trade 
mark? 
- if the answer to any of the questions in 1(a) is in the affirmative: 
(b) What evaluation criteria should be used in such cases to determine whether 
the use of an EU trade mark is consistent with honest practices in industrial and 
commercial matters? 
(c) Must Article 9(2) and Article 9(3)(a) of Regulation (EU) 2017/1001 of the 
European Parliament and of the Council of 14 June 2017 on the European Union 
trade mark be interpreted as meaning that, where the trade mark is included in the 
shape of an automotive part and in the absence in Regulation 2017/1001 of a 
clause that would be similar to the repairs clause in Article 110(1) of Council 
Regulation (EC) 6/2002 of 12 December 2001 on Community designs, the trade 
mark does not fulfil a designation function in that situation? 
(d) Must Article 9(2) and Article 9(3)(a) of Regulation (EU) 2017/1001 of the 
European Parliament and of the Council of 14 June 2017 on the European Union 
trade mark be interpreted as meaning that, where the mounting element for a trade 
mark, which reflects the shape of the trade mark or is confusingly similar to it, is 
included in the shape of an automotive part and in the absence in Regulation 
2017/1001 of a clause that would be similar to the repairs clause in Article 110(1) 
of Council Regulation (EC) No 6/2002 of 12 December 2001 on Community 
designs, that mounting element cannot be regarded as a trade mark with a 
designation function even if it is identical to the trade mark or confusingly similar 
to it? … 
Provisions of European Union law and case-law relied on  
Articles 9(2), 9(3), 14(1)(c) and 130(1) of Regulation 2017/1001;  
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Article 110(1) of Council Regulation (EC) No 6/2002 of 12 December 2001 on 
Community designs (‘Regulation 6/2002’); 
Judgment of 20 December 2017, Acacia Srl, C-397/16 and C-435/16, 
ECLI:EU:C:2017:992 (‘the Acacia judgment’); 
Order of 6 October 2015, Ford Motor Company, C-500/14, ECLI:EU:C:2015:680 
(‘the Ford order’); 
Judgment of 17 March 2005, Gillette Company and Gillette Group Finland, 
C-228/03, ECLI:EU:C:2005:177 (‘the Gillette judgment’); 
Judgment of 23 February 1999, Bayerische Motorenwerke AG (BMW) and BMW 
Nederland BV, C-63/97, ECLI:EU:C:1999:82 (‘the BMW judgment’); 
Judgment of 4 November 1997, Parfums Christian Dior/Evora, C-337/95, 
ECLI:EU:C:1997:517 (‘the Dior judgment’). 
Provisions of national law relied on 
Ustawa z dnia 30 czerwca 2000 r. – Prawo własności przemysłowej (Industrial 
Property Law of 30 June 2000, consolidated text: Dziennik Ustaw (Journal of 
Laws) of 2021, item 324) – Articles 286 and 296.  
Succinct presentation of the facts and procedure in the main proceedings 
1 For the purposes of the present reference, the referring court made the following 
findings of fact.  
2 The applicant, AUDI AG established in Ingolstadt (Germany), has exclusive 
rights to the EU trade mark shown below, registered under No 000018762, inter 
alia, in Class 12 of the Nice Classification (vehicles, spare parts, automotive 
accessories). The mark is a sign in which each of the four circles (rings) overlap, 
or in which the two central circles (rings) overlap. It is highly distinctive, widely 
known in Poland and unambiguously associated with the applicant’s company. 
 
3 The defendant, GQ, is in the business of selling automotive spare parts. It sells 
products primarily to other businesses (distributors) and does not sell to 
consumers. Between 1986 and 2017, the defendant offered (and advertised) on its 
website radiator grilles customised and designed for old Audi models. 
SUMMARY OF THE REQUEST FOR A PRELIMINARY RULING – CASE C-334/22 
 
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4 Those radiator grilles included a space for mounting the car manufacturer’s 
original figurative trade mark (emblem), that is to say, they included mounting 
elements that reflected the appearance of the applicant’s trade mark. Beginning in 
2017, the applicant began filing lawsuits against the defendant, seeking to block 
the offering for sale of non-original spare parts in which the shape of certain 
elements reflected (partially or completely) the applicant’s trade mark. Despite 
gradually withdrawing such spare parts from sale since 2017, the defendant 
decided, pending the judicial resolution of those disputes, to import the radiator 
grilles at issue.  
5 In its statement of claim dated 5 May 2020, the applicant sought an injunction 
prohibiting the defendant from importing, offering, marketing and advertising 
radiator grilles not originating from AUDI AG and bearing a sign identical or 
similar to its EU trade mark, and ordering the destruction of 70 such automotive 
radiator grilles seized by customs. 
6 It is the defendant’s will, however, to continue to sell those parts because, in its 
view, this does not infringe the applicant’s rights. According to the defendant, the 
sales restriction is temporary until the court cases are resolved, and the radiator 
grilles it imported were not offered by Polish Audi dealers. They are only sold in 
small numbers and their sale is of little economic importance to the defendant. 
The defendant aims to maintain its high position on the Polish automotive spare 
part market and is guided by the principle of ensuring the availability of parts of a 
given type for all possible models. During the trial, it cited the practice of other 
automobile manufacturers who do not object to the sales of radiator grilles which 
include a space resembling their original emblem as well as allowing that emblem 
to be mounted. It presented photographs of radiator grilles for 17 car models 
manufactured by brands such as Opel, Volkswagen, Mitsubishi, Mazda, Volvo, 
Peugeot, Kia, Honda and Hyundai, pointing out that the manufacturers had never 
objected to the practice of selling automotive parts that included mounting 
elements for trade marks.  
7 On the other hand, the applicant indicated that the defendant could offer radiator 
grilles that correspond in terms of their appearance and technical parameters to 
original car parts, but without the mounting element in the shape of the trade 
mark.  
8 The referring court raised, of its own motion, and presented to the parties, doubts 
regarding the interpretation of EU law. Both parties presented differing positions 
on the need for interpretation of that law and the areas such interpretation ought to 
cover.  
Essential arguments of the parties in the main proceedings 
9 According to the applicant, the key issue is the interpretation of Article 14(1)(c) of 
Regulation 2017/1001 and the interpretation of the wording on the use of EU trade 
marks ‘for the purpose of identifying or referring to goods or services as those of 
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the proprietor of that trade mark’. The existing case-law of the Court of Justice, 
such as the BMW and Gillette judgments, does not apply to this case because it 
concerns the use of a trade mark to indicate intended purpose, and the intention of 
the EU legislature, as shown by the wording ‘in particular’, was to extend the 
exception also to cases other than the indication of intended purpose. However, it 
should be examined in each case whether that use is consistent with honest 
practices in industrial and commercial matters. This, according to the applicant, is 
a general exception to the general rule that an exclusive right should be protected, 
which, as indicated by the word ‘necessary’ in the text of the provision, should be 
interpreted strictly. An exclusive right may only be restricted under that article 
where the use of the trade mark (in the form of a groove or embossment) on the 
radiator grille is the only feasible technical solution.  
10 According to the applicant, the exception contained in the aforementioned 
provision to the rule that an exclusive right should be protected shifts the burden 
of proof to the manufacturer/distributor of the non-original spare part with respect 
to two issues. It is for that manufacturer to demonstrate, first, that the disputed 
element of the spare part only has a technical function as opposed to functions 
typical of a trade mark and, second, that from the technical point of view there is 
no other possibility of mounting the emblem on the radiator grille than by means 
of a mounting element incorporating that EU trade mark. In order for a third party 
to rely on that provision with respect to the use of a trade mark on a radiator grille 
for the purpose of mounting an emblem so as to reproduce the original appearance 
of the vehicle, that third party must demonstrate that its use is purely functional 
and necessary, and that it is the only technically feasible means of mounting the 
original emblem.  
11 If the answer [to question 1(a)] is in the affirmative, it is necessary, in the 
applicant’s view, to establish the criteria that should be taken into account by the 
referring court in assessing whether that use is in accordance with honest practices 
in industrial and commercial matters. Such criteria should take into account the 
interests of the right holder, including, in particular, the fact that it has no control 
over the manufacture of the car part in question, its aesthetics, quality and, 
consequently, compliance with safety requirements, the right holder’s inability to 
control the use of the trade mark (the mounting element), and the risk of 
misleading potential buyers who are not professionals that a mounting element 
identical or confusingly similar to the trade mark is an indication of origin (the 
Audi trade mark). Since Audi’s EU trade mark is a trade mark with a reputation, a 
certain kind of association in the mind of the public with high product quality is 
protected, and there is a danger of that mark being tarnished or degraded due to 
the potentially poor quality of the radiator grilles. 
12 The defendant, on the other hand, disputed the basic premiss for protection under 
Article 9(2) of Regulation 2017/1001, namely ‘use of the sign’. In its opinion, the 
space on the radiator grille for mounting the emblem only has a technical function 
and would be perceived as such by an average consumer who is both rational and 
observant. The shape of the space for mounting the emblem would not be 
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perceived by a consumer as an indication of the origin of the goods, but rather as a 
necessary element of any spare part that is intended to enable the repair of the 
vehicle by restoring its original appearance. 
13 The defendant argues, citing paragraph 43 of the Ford order, that the order in 
question, in which the Court found that the repairs clause provided for in the 
design regime cannot be applied by analogy to trade mark law, does not preclude 
consideration of the purpose of the repairs clause, which is meant to promote 
competition, when interpreting relevant provisions of trade mark law, such as 
Articles 9 and 14 of Regulation 2017/1001. 
14 The interpretation of those provisions must take into account the fact that the 
existence of any competition depends on the ability of independent entities to 
manufacture and distribute spare parts in order to restore the original appearance 
of a complex product. The defendant requested, inter alia, should the question be 
referred to the Court, that Article 9(2) of Regulation 2017/1001 be interpreted and 
the question answered as to whether, where non-original automotive spare parts 
are manufactured or distributed in the form of radiator grilles with a space 
intended for mounting the original figurative trade mark (emblem) of the car 
manufacturer, as an element of the radiator grille shaped for that purpose, this 
constitutes the use of a sign in relation to those goods within the meaning of 
Article 9(2) of Regulation 2017/1001. 
Succinct presentation of the reasoning in the request for a preliminary ruling 
15 The referring court must rule on the merits of the claim for protection of the 
applicant’s exclusive right to the EU trade mark. 
16 The court must determine whether the scope of protection of the exclusive right to 
a trade mark also extends to elements for affixing that mark to an automotive part 
that are identical, confusingly similar or similar in their appearance (shape) to the 
trade mark. Indeed, the automotive parts at issue are designed to have trade marks 
affixed to them. Those marks can only come from the right holder. It has never 
been claimed that the defendant used goods that reflected the trade mark itself. 
17 The referring court cites Article 110(1) of Regulation 6/2002 (known as the 
‘repairs clause’), which reads ‘Until such time as amendments to this Regulation 
enter into force on a proposal from the Commission on this subject, protection as a 
Community design shall not exist for a design which constitutes a component part 
of a complex product used within the meaning of Article 19(1) for the purpose of 
the repair of that complex product so as to restore its original appearance.’  
18 It points out that Regulation 2017/1001 does not contain an equivalent clause. The 
consequences of its absence should be considered in two types of situations: 
where the proprietor of the trade mark affixed to an automotive part is at the same 
time the proprietor of the Community design, and where the manufacturer of the 
original part is only the proprietor of the trade mark. In both situations the 
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question is whether the exclusive right to the trade mark may prevent others from 
manufacturing and selling the spare part.  
19 In the view of the referring court, the meaning of the repairs clause is that, if 
certain conditions are met, the manufacturer of the non-original part may 
manufacture it despite the protection of the Community design. Where the 
manufacturer of the original part does not benefit from Community design 
protection, the ability of other entities to manufacture spare parts is simply the 
result of their freedom to engage in economic activity. Therefore, trade mark 
protection cannot give the owner greater exclusivity than cumulative trade mark 
and Community design protection.  
20 It is clear from the Ford order that the repairs clause cannot be applied by analogy 
to trade mark law. The two Court of Justice judgments to date on the interrelation 
of design law and trade mark law concerned facts which are only partially similar 
to the present case. The differences are the absence of Community design 
protection and the absence of use of the trade mark itself. The judgments in those 
cases do not conclusively resolve the doubts concerning the interpretation of 
Regulation 2017/1001. 
21 In the Ford order, which involved the sale of wheel covers showing faithful 
reproductions of trade marks of a number of motor vehicle manufacturers, 
including the Ford trade mark, and which involved the use of a trade mark on a 
non-original automotive part, the Court held that such conduct infringed the 
exclusive right to a trade mark and could not be justified under the repairs clause. 
In the Acacia judgment, the courts examined the sale of alloy car wheel rims 
identical to those protected under Community designs belonging to Audi and 
Porsche. However, the car wheel rims offered for sale did not bear Audi or 
Porsche trade marks, but the trade mark of their manufacturer WSP Italy (and 
some did not bear any trade marks at all). 
22 In the view of the referring court, in the Acacia case the Advocate General took an 
undogmatic position when seeking a solution to the problem of the sale of non-
original parts which bore the trade mark of the manufacturer of the original parts 
by suggesting that the Court find that the use of the non-original part 
manufacturer’s trade mark on that part does not result in a design that is 
significantly different. This was a good attempt to escape the stalemate which, in 
the opinion of the referring court, consists in the fact that if the manufacturer of a 
non-original part cannot use the trade mark of the manufacturer of the original 
part and at the same time cannot use its own mark or manufacture and offer for 
sale parts without any mark or with its own mark, then this effectively reduces the 
scope of Article 110(1) of Regulation 6/2002 to zero. 
23 In the Acacia judgment, the Court did not address the effect changing the trade 
mark on a replacement part would have on the appearance of that part. It pointed 
out that the repairs clause applies only to component parts of a complex product 
that are visually identical to original parts. Any use of a component part which is 
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not for the purpose of restoring a complex product to the appearance it had when 
it was placed on the market is, accordingly, excluded. That is the case if, inter alia, 
the replacement part does not correspond, in terms of its colour or its dimensions, 
to the original part, or if the appearance of a complex product has changed since it 
was placed on the market. The Court, however, did not take a position on the 
impact of a change in the trade mark (either its replacement with another one or 
the removal of the ‘original’ trade mark) on the assessment of whether identical 
appearance justifying application of the repairs clause is maintained.  
24 The referring court has doubts as to whether the later Acacia judgment requires a 
new reading of the Ford order so that other manufacturers are not prevented from 
manufacturing and offering spare parts both with and without the use of a trade 
mark. Since, in the Acacia judgment, the Court stressed that in order to benefit 
from the repairs clause, 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, this implies a restrictive interpretation 
of the Ford order. Perhaps the Ford order should only be applied to a particular 
category of automotive spare parts and accessories, such as wheel covers, because 
of their somewhat different nature – partly ornamental rather than technical. 
25 While it is not possible to supplement Regulation 2017/1001 through the 
application by analogy of Article 110(1) of Regulation 6/2002, it is possible to 
protect undistorted competition through an appropriate interpretation of Article 9 
of Regulation 2017/1001, holding that a trade mark affixed to a part other than a 
wheel cover should be treated as not having a designation function. It is not 
certain, however, that the Court’s case-law to date can be interpreted in such a 
manner. According to the referring court, the doubts [as reflected in Question 
1(c)] are even greater in those cases where the right holder only relies on the 
exclusive right to the trade mark and not on the combined right to the trade mark 
and the Community design. 
26 The referring court has doubts, and refers here to the Dior judgment, as to whether 
trade mark law may frustrate the pursuit of undistorted competition and be 
detrimental to the interest of consumers in being able to choose between the 
purchase of original and non-original car parts in a situation where the offering of 
those non-original parts for sale (without the context of the trade mark) is known 
to be lawful in itself. 
27 The same considerations and concerns [as reflected in Question 1(d)] apply in a 
situation where an element for mounting a trade mark is not considered a trade 
mark even though it reflects the shape of the trade mark or is confusingly similar 
to it. Although that issue falls outside the scope of the present case, it appears that, 
in the absence of an equivalent repairs clause in Regulation 2017/1001, an 
interpretation that would nullify the principle of competition protection altogether 
by allowing trade mark law to block the manufacture of non-original parts would 
be incorrect. 
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28 Even if it is accepted that an element for mounting a mark fulfils a designation 
function, doubts arise [as reflected in Question 1(a)] as to whether Article 14(1)(c) 
of Regulation 2017/1001 provides a separate basis for the permissibility of placing 
a sign identical or confusingly similar to a trade mark which constitutes an 
element for mounting that mark. Doubts also arise [as reflected in Question 1(b)] 
as to what evaluation criteria should be used in such cases in order to determine 
whether the use of an EU trade mark is consistent with honest practices in 
industrial and commercial matters. It is debatable whether past practice in a 
particular industry can be the source of an extension or limitation of the scope of 
protection under an exclusive right. In such a case, it is necessary to balance the 
interests of the right holder (especially in the case of a trade mark with a 
reputation) against those of the manufacturer of non-original parts. The extent of 
the information provided to potential purchasers about the origin of the parts in 
question and the circumstances in which it is provided may also be relevant.  
29 The referring court considers that the doubts raised would probably best be 
resolved by providing an appropriate interpretation of Article 9 of Regulation 
2017/1001. It proposes that Question 1(c) and Question 1(d) be answered in the 
affirmative. In the event that the Court finds that the proper way to resolve those 
doubts is through an appropriate interpretation of Article 14 of that regulation, the 
referring court proposes that Question 1(a) be answered in the affirmative.