Clifford Chance

Judgment of 11 January 2024, Case C‑361/22, involving the entities Buongiorno Myalert, S.A. ("Buongiorno") and Industria de Diseño Textil, S.A. ("Inditex")

The events that gave rise to this case date back to 2010 when Buongiorno, a provider of information services via the Internet and mobile phone networks, launched an advertising campaign for a paid subscription to a multimedia messaging service. The subscription involved participation in a prize draw, in which one of the prizes consisted of a "ZARA" gift card worth €1,000. The subscriber was shown the "ZARA" sign in a rectangle, reminiscent of the design of gift cards.

Inditex filed a complaint before the Spanish courts claiming infringement of the rights derived of its well-known ZARA trademark because of the use carried out by Buongiorno of that trademark. Although the complaint was dismissed in the first and second instance, the Supreme Court decided to make a request for a preliminary ruling.

The preliminary ruling referred to the scope of the referential use exception provided for in Article 6(1)(c) of former Directive 2008/95/EC, which was in force at the time of the facts giving rise to the dispute in the main proceedings. In particular, the Spanish Supreme Court doubted whether said provision had the same scope as the current provision relating to the referential use of trademarks set out in Article 14(1)(c) of Directive 2015/2436 .

For the sake of completeness, the wording of both articles is compared in the following table:

In its judgment of 11 January 2024, the CJEU concluded that Article 6(1)(c) Directive 2008/95/EC had a narrower scope than Article 14(1)(c) of Directive (EU) 2015/2436. In particular, it concluded that the use that could not be prohibited under former Article 6(1)(c) of Directive 2008/95 constituted only one of the situations of lawful use which a trademark's proprietor cannot oppose under Article 14(1)(c) of Directive 2015/2436.

Judgment of 25 January 2024, case C-334/22, involving the entities Audi AG ("Audi") and GQ

In this case, GQ, a natural person engaged in the sale of spare parts for motor vehicles, advertised and offered radiator grilles, adapted and designed for older models of Audi motor vehicles, that contained an element designed for the attachment of the emblem of the Audi brand.

Audi took legal action against GQ to prevent him from offering for sale non-original spare parts containing elements which represented all or part of the Audi brand.

The Warsaw Regional Court dealing with these proceedings decided to request a preliminary ruling to determine, among other questions, whether Article 14(1)(c) of Regulation 2017/1001 - identical to Article 14(1)(c) of Directive 2015/2436 - precluded the proprietor of an EU trade mark from prohibiting a third party from making use on the market of a sign identical with or similar to said trademark in car spare parts (radiator grilles), where that sign consisted of the shape of an element of the radiator grille designed for the attachment thereto of the emblem representing that trademark, and taking into account whether or not there was a technical possibility of affixing that emblem to the radiator grille without affixing the aforementioned sign to it.

When replying to said question, the CJEU first recalled that, as stated in case C-361/22, the limit to trademark proprietors contained in former Article 6(1)(c) Directive 2008/95/EC (i.e. the impossibility for the proprietor of a trademark to prohibit a third party from using that trademark where such use is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part) was just one of the situations in which the exclusive right conferred by the trademark cannot be relied on against a third party.

The CJEU then distinguished between (i) a situation where an undertaking not economically linked to the proprietor of a trademark affixes a sign identical with, or similar to, that trademark to spare parts marketed by it and intended to be incorporated into the goods of that proprietor, and (ii) a situation in which such an undertaking, without affixing a sign identical with, or similar to, the trademark to those spare parts, uses that trademark to indicate that those spare parts are intended to be incorporated into the goods of the proprietor of that trademark.

The CJEU concluded that only scenario (ii) would be covered by the exception contained in Article 14(1)(c) of Regulation 2017/1001. Scenario (i) would exceed the scope of the trademark referential use.

According to the CJEU, where a sign identical with, or similar to, an EU trademark constitutes an element of a spare part for motor vehicles, that is designed for the attachment of the emblem of the manufacturer of those vehicles to it and is not used to designate or refer to goods or services as being those of the proprietor of that trademark but to reproduce as faithfully as possible a product of that proprietor, such use of that trademark does not fall within Article 14(1)(c) of Regulation 2017/1001 and thus may be prohibited by the proprietor of the trademark.

Conclusion

With these two recent judgments the CJEU has shed more light on the referential use exception in relation to trademarks. The CJEU has (i) confirmed that the scope of this exception in its current wording is wider than its preceding provision and (ii) provided an example of a situation that would not fall within the referential use exception contained in Article 14(1)(c) of Regulation 2017/1001 – which is identical to Article 14(1)(c) of Directive (EU) 2015/2436 –.