Hi,
I import and sell various replacement unbranded car parts, a supplier has approached me offering to supply me with replacement car grill/bonnet/boot badges of various manufacturers and styles.
The parts are all pretty cheap and I assume non-genuine however despite this there appears to already me a large marketplace for these products on Amazon UK.
I can't post a link as I'm a new member but if you google "amazon uk car emblems" and follow the first link you'll see the kind of products I mean.
What is the legality of these parts? I would assume they are infringing copyright/trademarks yet there are also hundreds of listings and even a dedicated category for these products on Amazon who I assume would put a stop to this if it's illegal.
You don't see listings for other fake products on Amazon, trainers, clothing, etc so why do they allow car badges? Are they protected by some "right to repair" law as can be the case with other replacement car parts.
flerger
Car Logo Copyright
Hi flerger,
You are right in thinking these badges (the originals) are protected by a number of intellectual property rights such as copyright in the artistic work, trade mark and no doubt design right as well. And as you speculate there are also special provisions within the law on design right which apply to replacement spare parts.
And given that the car industry has long tolerated and accepted a thriving third party market for such parts, I assume that the manufacturers can't be bothered go after these traders over what amount to technical infringements of their rights.
One thing which surprises me is that the traders do not appear to be making it clear that what they are selling are not genuine parts from the car manufacturer.
Here's an example concerning BMW wheel centre caps:
Genuine parts and probably not genuine.
In the first link, not only does the seller claim these are genuine BMW parts, he also quotes a part number which could arguably be the correct BMW stock code. I assume therefore these really are genuine BMW parts.
In the second listing, the trader is selling his caps for roughly two thirds the price given in the previous listing and states the part number as 'BMW001' which suggests it isn't a genuine BMW product, although he doesn't explicitly say so.
I can only speculate on why in this particular case (the second listing), BMW have not taken action to get the listing removed from Amazon, so the following is just my thoughts.
Copyright. While copyright attaches to any original artistic work, if the work is then manufactured in quantity, the resulting copies are not protected (see section 52 of the Copyright Designs and Patents Act 1988).
Trade Mark. Where a trade mark is used descriptively*, that use is not infringement. Only when the trade mark is used to falsely indicate the origin of the goods is the genuine manufacturer would there be grounds for an infringement claim. This is why I am surprised that in the second example above, the trader has stated "Brand: BMW" and made no mention of the fact that his is not a genuine BMW product. This is where I think that the motor industry's traditional tolerance of secondary spare parts must be playing a role.
Design Right. Design right is infringed if a product is made to the original design without permission, but Section 7A (5) of the Registered Designs Act 1949 permits the manufacture of spare parts
I hope this clarifies things a bit.
* by this I mean the trade marked word is used as an adjective. If you wanted to describe a part for a particular car, you would have to use the name of the car in order to be clear what you were talking about, and that sort of use would be descriptive and not necessarily an indication of the origin of the goods. This is a tricky area to argue in court as one clothing manufacturer found recently: See paragraph 69 of this case Hearst Holdings v AVELA
You are right in thinking these badges (the originals) are protected by a number of intellectual property rights such as copyright in the artistic work, trade mark and no doubt design right as well. And as you speculate there are also special provisions within the law on design right which apply to replacement spare parts.
And given that the car industry has long tolerated and accepted a thriving third party market for such parts, I assume that the manufacturers can't be bothered go after these traders over what amount to technical infringements of their rights.
One thing which surprises me is that the traders do not appear to be making it clear that what they are selling are not genuine parts from the car manufacturer.
Here's an example concerning BMW wheel centre caps:
Genuine parts and probably not genuine.
In the first link, not only does the seller claim these are genuine BMW parts, he also quotes a part number which could arguably be the correct BMW stock code. I assume therefore these really are genuine BMW parts.
In the second listing, the trader is selling his caps for roughly two thirds the price given in the previous listing and states the part number as 'BMW001' which suggests it isn't a genuine BMW product, although he doesn't explicitly say so.
I can only speculate on why in this particular case (the second listing), BMW have not taken action to get the listing removed from Amazon, so the following is just my thoughts.
Copyright. While copyright attaches to any original artistic work, if the work is then manufactured in quantity, the resulting copies are not protected (see section 52 of the Copyright Designs and Patents Act 1988).
Trade Mark. Where a trade mark is used descriptively*, that use is not infringement. Only when the trade mark is used to falsely indicate the origin of the goods is the genuine manufacturer would there be grounds for an infringement claim. This is why I am surprised that in the second example above, the trader has stated "Brand: BMW" and made no mention of the fact that his is not a genuine BMW product. This is where I think that the motor industry's traditional tolerance of secondary spare parts must be playing a role.
Design Right. Design right is infringed if a product is made to the original design without permission, but Section 7A (5) of the Registered Designs Act 1949 permits the manufacture of spare parts
So this why these wheel caps can be made to look exactly like the original parts. What is more, design right only has a maximum term of 25 years (subject to re-registration after each 5 year period) and so in this particular case, the protection from design right may have lapsed.(5)The right in a registered design of a component part which may be used for the purpose of the repair of a complex product so as to restore its original appearance is not infringed by the use for that purpose of any design protected by the registration.
I hope this clarifies things a bit.
* by this I mean the trade marked word is used as an adjective. If you wanted to describe a part for a particular car, you would have to use the name of the car in order to be clear what you were talking about, and that sort of use would be descriptive and not necessarily an indication of the origin of the goods. This is a tricky area to argue in court as one clothing manufacturer found recently: See paragraph 69 of this case Hearst Holdings v AVELA
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Hi Andy,
Thanks for your detailed reply. I actually went ahead and ordered some badges but unfortunately a quantity of these (all of a particular manufacturer) have been seized by customs.
I had an initial letter from customs asking if I consented to the destruction of the seized badges however I had no further information or right of appeal at this point, simply "yes I agree to the disposal" or "no I do not agree". Although the seized badges were all by this particular manufacturer I had also actually received some badges of the exact same design but a different size to those seized which left me confused as to why some badges were seized and others not... therefore I replied saying I did not consent to the destruction (Because I wanted to discuss the matter).
I have subsequently had correspondence from solicitors acting on behalf of the manufacturer who have asked me to sign undertakings including authorisation for the destruction of the goods, a promise not to import/sell any of the infringing goods again and payment of legal fees of around £1700.
Could you elaborate any more on your point about trademarks being used descriptively not being infringement, is this likely to apply in this situation? Would you able to point toward any relevant law concerning this? Would Section 7A (5) of the Registered Designs Act 1949 that you referenced regarding design right be applicable here or is there a similar law regarding trademark that allows the 'repair of a complex product'?
I'm still not sure why these goods are openly available to purchase on Amazon if they infringe trademark and why the solicitors don't simply get them removed which again makes me think as long they are described correctly (NOT original manufacturers parts) and fall foul of passing off that they also do not infringe trademark as they are badges specifically designed to be used as a replacement part on a car in an identifying manner.
The solicitors have actually also accused me of passing off which I have pointed out, I believe correctly, it is not possible for me to have done as I haven't even received the goods, let alone sold them as something they're not.
flerger
Thanks for your detailed reply. I actually went ahead and ordered some badges but unfortunately a quantity of these (all of a particular manufacturer) have been seized by customs.
I had an initial letter from customs asking if I consented to the destruction of the seized badges however I had no further information or right of appeal at this point, simply "yes I agree to the disposal" or "no I do not agree". Although the seized badges were all by this particular manufacturer I had also actually received some badges of the exact same design but a different size to those seized which left me confused as to why some badges were seized and others not... therefore I replied saying I did not consent to the destruction (Because I wanted to discuss the matter).
I have subsequently had correspondence from solicitors acting on behalf of the manufacturer who have asked me to sign undertakings including authorisation for the destruction of the goods, a promise not to import/sell any of the infringing goods again and payment of legal fees of around £1700.
Could you elaborate any more on your point about trademarks being used descriptively not being infringement, is this likely to apply in this situation? Would you able to point toward any relevant law concerning this? Would Section 7A (5) of the Registered Designs Act 1949 that you referenced regarding design right be applicable here or is there a similar law regarding trademark that allows the 'repair of a complex product'?
I'm still not sure why these goods are openly available to purchase on Amazon if they infringe trademark and why the solicitors don't simply get them removed which again makes me think as long they are described correctly (NOT original manufacturers parts) and fall foul of passing off that they also do not infringe trademark as they are badges specifically designed to be used as a replacement part on a car in an identifying manner.
The solicitors have actually also accused me of passing off which I have pointed out, I believe correctly, it is not possible for me to have done as I haven't even received the goods, let alone sold them as something they're not.
flerger
Hi flerger,
I'm sorry to hear that your efforts to import these badges have run into difficulties. You asked a number of specific questions which I will try to answer.
There are a number of cases which I think are relevant here:
Arsenal FC v Matthew Reed Although this had nothing to do with car parts, the case did highlight the way in which a trade mark (in this instance the words Arsenal Football Club) might be used descriptively as a badge of allegiance. To paraphrase the argument advanced by Mr Reed, an unofficial replica scarf in Arsenal colours could be described as an "Arsenal scarf" even though it was not an official scarf, because the word Arsenal was being used as an adjective, not a trade mark indicating the origin of the goods. Mr Reed was successful with this argument at first instance, but the decision was reversed on appeal, after a reference to the Court of Justice of the European Union. (The CJEU reasoning can be found here).
BMW v Round and Metal This case does deal with similar issues to your case, and is a relatively recent decision.
Datacard Corp v Eagle Technologies. I have included this case because it is also fairly recent. Again, it doesn't specifically deal with the special case of car parts, but rather how the European Trade Mark Directive should be interpreted. The part concerning trade mark infringement starts at paragraph 237.
BMW v Deenik (pdf) And finally another case involving the motor trade, although this was about the use of the trade mark BMW in connection with unapproved services rather than parts.
I mentioned the EU directive (pdf) on trade marks. This document is important because it underpins the UK law on trade marks and if you look at Article 6. 1 (c) this answers your question about whether there is a similar provision under trade mark law to the repair of a complex product provisions under design right law. This is the second trade mark directive, and it is worth noting that the Arsenal case, and the BMW v Deenik case were conducted under the earlier directive, although it contained very similar wording on the issue of limits to a proprietor's right to prohibit a third party from using a mark for the purposes listed in Article 6.
I think you are right that an allegation of passing off is bound to fail since you had not offered these goods to the public. However, I think it has to be said that the threat of litigation needs to be taken seriously and that you should consider getting legal advice before taking your next step. Make sure that if you do, you retain a solicitor with IP experience. You can find firms specialising in IP via the Law Society's website and selecting Media, IT and Intellectual Property from the drop down menu.
Good luck.
I'm sorry to hear that your efforts to import these badges have run into difficulties. You asked a number of specific questions which I will try to answer.
There are a number of cases which I think are relevant here:
Arsenal FC v Matthew Reed Although this had nothing to do with car parts, the case did highlight the way in which a trade mark (in this instance the words Arsenal Football Club) might be used descriptively as a badge of allegiance. To paraphrase the argument advanced by Mr Reed, an unofficial replica scarf in Arsenal colours could be described as an "Arsenal scarf" even though it was not an official scarf, because the word Arsenal was being used as an adjective, not a trade mark indicating the origin of the goods. Mr Reed was successful with this argument at first instance, but the decision was reversed on appeal, after a reference to the Court of Justice of the European Union. (The CJEU reasoning can be found here).
BMW v Round and Metal This case does deal with similar issues to your case, and is a relatively recent decision.
Datacard Corp v Eagle Technologies. I have included this case because it is also fairly recent. Again, it doesn't specifically deal with the special case of car parts, but rather how the European Trade Mark Directive should be interpreted. The part concerning trade mark infringement starts at paragraph 237.
BMW v Deenik (pdf) And finally another case involving the motor trade, although this was about the use of the trade mark BMW in connection with unapproved services rather than parts.
I mentioned the EU directive (pdf) on trade marks. This document is important because it underpins the UK law on trade marks and if you look at Article 6. 1 (c) this answers your question about whether there is a similar provision under trade mark law to the repair of a complex product provisions under design right law. This is the second trade mark directive, and it is worth noting that the Arsenal case, and the BMW v Deenik case were conducted under the earlier directive, although it contained very similar wording on the issue of limits to a proprietor's right to prohibit a third party from using a mark for the purposes listed in Article 6.
I think you are right that an allegation of passing off is bound to fail since you had not offered these goods to the public. However, I think it has to be said that the threat of litigation needs to be taken seriously and that you should consider getting legal advice before taking your next step. Make sure that if you do, you retain a solicitor with IP experience. You can find firms specialising in IP via the Law Society's website and selecting Media, IT and Intellectual Property from the drop down menu.
Good luck.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007
Many thanks for what again was an absolutely fantastic reply and much more than I could have hoped for, you seem to be a real font of knowledge on this subject and your willingness to spend time sharing this knowledge is truly admirable.
The cases you provided links to are great and, my current predicament aside, I found them very interesting reading, well, what I managed to take in from it all until the small hours of the morning that is...
With regard to Article 6.1(c) the wording of the limitation states "the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts" - I may have interpreted this incorrectly but as it says "intended purpose" would this therefore not be relevant to a car badge which is used to identify a vehicle rather than actually indicating its intended purpose. I read this limitation as more for situations where a trademarked name is allowed to be used to describe a product, e.g. if you were selling aftermarket (non-branded) accessories for a vehicle you would be allowed to use the manufacturers trademarked name to describe which make/models the accessories were compatible with.
Would EU Directive Article 7 (Trade Marks Act 1994 Section 12) relating to the exhaustion of rights be more relevant? A Community trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. I understand that in BMW v Round and Metal this defence was rejected however the products in question there were upgrade parts whereas in my situation they are direct replacements for existing parts.
The whole marketplace for these parts does seem to be a very grey area indeed although surely the key point is that car owners should be free to repair vehicles to their original appearance without being limited in their buying options to do so because of a trademark. If the badge fell off my car and I decided to paint one back on myself would I be guilty of infringement?
The cases you provided links to are great and, my current predicament aside, I found them very interesting reading, well, what I managed to take in from it all until the small hours of the morning that is...
With regard to Article 6.1(c) the wording of the limitation states "the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts" - I may have interpreted this incorrectly but as it says "intended purpose" would this therefore not be relevant to a car badge which is used to identify a vehicle rather than actually indicating its intended purpose. I read this limitation as more for situations where a trademarked name is allowed to be used to describe a product, e.g. if you were selling aftermarket (non-branded) accessories for a vehicle you would be allowed to use the manufacturers trademarked name to describe which make/models the accessories were compatible with.
Would EU Directive Article 7 (Trade Marks Act 1994 Section 12) relating to the exhaustion of rights be more relevant? A Community trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. I understand that in BMW v Round and Metal this defence was rejected however the products in question there were upgrade parts whereas in my situation they are direct replacements for existing parts.
The whole marketplace for these parts does seem to be a very grey area indeed although surely the key point is that car owners should be free to repair vehicles to their original appearance without being limited in their buying options to do so because of a trademark. If the badge fell off my car and I decided to paint one back on myself would I be guilty of infringement?
Hi flerger,
I agree that this particular area is something of a mess, not least because it sits at the junction between copyright, trade mark and design right. The primary purpose of trade mark protection is "to guarantee the trade mark as an indication of origin", not to create a monopolistic restraint of trade. And Article 6 is expressly designed to reign-in the otherwise monopolistic nature of the rights of the owner of the mark where it is appropriate.
I believe that Article 6.1 (c) of the Trade Mark Directive was intended to cover the sort of circumstance where a replacement car part was required to be visually similar, as with a bonnet badge. Obviously the whole purpose of some replacement parts such as a body panel or a windscreen is to restore the original look of the maker's product. The difference being that the latter are not subject to trade mark restrictions whereas a bonnet badge is.
This issue came up in BMW v Round and Metal, where the replacement wheel hubs were supplied with transfers bearing the BMW logos etc for the end user to apply. In that instance, the High Court rejected the aesthetic argument and found this was an infringement of trade mark largely on the grounds that a subsequent owner of the car (and the new wheels) would be misled into thinking the wheels were genuine BMW components.
Unfortunately the exhaustion of rights (Article 7) does not assist you because it refers to genuine parts once they (or the complex item of which they form part) have been sold. So for instance if you had obtained a genuine BMW bonnet badge from a scrap yard, you would be perfectly free to sell that on eBay or where ever as a BMW part, because it had genuine provenance having come from a BMW car which had been lawfully sold in the EU.
Afternote. The CJEU is going to look at this problem again, in the context of design right, following a new reference from Italy. More details on the Marques/Class 99 blog. However, realistically, we cannot expect a decision from the CJEU for many months.
I agree that this particular area is something of a mess, not least because it sits at the junction between copyright, trade mark and design right. The primary purpose of trade mark protection is "to guarantee the trade mark as an indication of origin", not to create a monopolistic restraint of trade. And Article 6 is expressly designed to reign-in the otherwise monopolistic nature of the rights of the owner of the mark where it is appropriate.
I believe that Article 6.1 (c) of the Trade Mark Directive was intended to cover the sort of circumstance where a replacement car part was required to be visually similar, as with a bonnet badge. Obviously the whole purpose of some replacement parts such as a body panel or a windscreen is to restore the original look of the maker's product. The difference being that the latter are not subject to trade mark restrictions whereas a bonnet badge is.
This issue came up in BMW v Round and Metal, where the replacement wheel hubs were supplied with transfers bearing the BMW logos etc for the end user to apply. In that instance, the High Court rejected the aesthetic argument and found this was an infringement of trade mark largely on the grounds that a subsequent owner of the car (and the new wheels) would be misled into thinking the wheels were genuine BMW components.
Unfortunately the exhaustion of rights (Article 7) does not assist you because it refers to genuine parts once they (or the complex item of which they form part) have been sold. So for instance if you had obtained a genuine BMW bonnet badge from a scrap yard, you would be perfectly free to sell that on eBay or where ever as a BMW part, because it had genuine provenance having come from a BMW car which had been lawfully sold in the EU.
Afternote. The CJEU is going to look at this problem again, in the context of design right, following a new reference from Italy. More details on the Marques/Class 99 blog. However, realistically, we cannot expect a decision from the CJEU for many months.
Advice or comment provided here is not and does not purport to be legal advice as defined by s.12 of Legal Services Act 2007