REPARATION CLAUSE AND PROTECTION OF REGISTERED TRADEMARKS. THE COURT OF TURIN FOLLOWS THE CASE LAW OF THE COURT OF JUSTICE OF THE EUROPEAN UNION.
With order dated May 23, 2016, the Court of Turin granted the precautionary protective measures for stopping production and sale, as well as conceding the seizure and withdrawal from commerce of wheel covers for automobiles manufactured by the company Wheeltrims S.r.l.. The wheels reproduced registered marks belonging to Volkswagen AG, Seat S.A. and Skoda Auto.
The decision adheres to the principle stated by the Court of Justice of the European Union in a judgment dated October 6, 2015, (C-500/14) and referred to a preliminary ruling submitted by the Court of Turin in proceedings involving Wheeltrims S.r.l.. According to the Court of Justice, the commercialization of spare parts, allowed within European territory pursuant to the reparation clause, does not, however, authorize the producers of the part in infringing the norms protecting registered trademarks.
The Piedmontese Court stated that the spare parts dealer may use the third party registered trademarks only and exclusively for the purpose of indicating the destination of the product or service, or with a view to indicating the compatibility of the dealer’s own spare part with a given automobile model. The use of registered signs is, however, inhibited when affixing the mark may result in confusion as to the origin of the product, preventing the consumer from distinguishing between the original product and that of the dealer.
The Court has reaffirmed the greater interest in protecting rights of industrial property as well as those predisposed for market transparency, so that the consumer may always ascertain the origin of the goods and the entity that has produced them.