In a judgment on January 25 the Court of Justice of the EU (CJEU) answered two questions referred from a Polish national court in a dispute between car maker Audi and an individual (known as GQ). GQ sold radiator grilles that contained an element designed for the attachment of the Audi four-ring logo.
The grilles GQ sold did not originate from Audi and were not placed on the market with the German brand’s consent.
The shape of the grilles was either identical or similar to Audi’s trademark, the national court had found.
The CJEU noted that, unlike in design law, there is no ‘repair clause’ for trademarks.
It concluded that a third party who sells spare parts “containing an element which is designed for the attachment of the emblem representing that trademark and the shape of which is identical with, or similar to, that trademark” makes use of the sign in a manner liable to affect one or more functions of the trademark.
The court also ruled that: “The affixing of a sign identical with, or similar to, the trademark on the goods marketed by the third party exceeds … the referential use referred to in Article 14(1)(c) of Regulation 2017/1001 [the EUTM Regulation] and therefore does not fall within any of the situations covered by that provision.”
The case now returns to the Warsaw Regional Court for further hearings.
Pawel Siekierzynsk, a partner at SK+ Skiekierzynski Kochlewski in Warsaw, was brought in specifically to handle the CJEU referral.
He told Managing IP how his firm approached the case and why he expects more trips to Luxembourg in the future.
How long have you been working with Audi?
This is the first time we have worked for Audi. However, we have already worked for Volkswagen within the same group (Volkswagen & Audi Group).
We have quite a lot of German clients. I speak German and have studied law in Germany. The German legal language is very precise and is different from English in some ways. I think our ability to communicate with the client in German was one of the reasons we were asked to take on this case. Before long I was even thinking about the case in German!
How did you get to work on this particular case?
I was personally recommended to Audi to work on this case. Audi approached us when they were compiling a shortlist of firms for the CJEU referral.
I will never forget the call I got from Audi during my holidays and the first conference call on the following day. It’s exciting to be called by a client like Audi and to be involved in a CJEU case by the client, especially when you have never worked for the client before. It’s a lot of trust in you and you want to prove that it was the right decision.
We had not represented Audi in this case before the Polish court. I was retained to act before the CJEU, after the referral had already taken place.
Knowing the case now, I think (and it’s not only my opinion) that this did not necessarily have to go to the CJEU. However, sometimes even quite clear rules need to be reiterated, but by somebody who has the authority which allows the end of the discussion. That’s why it’s good to have the CJEU as a guide.
How big a team worked on the case and how did you put them together?
The team comprised three attorneys in our firm. I was the lead, alongside partners Aleksandra Penkowska, and Bartlomiej Kochlewski. We also worked with three attorneys from the Berlin office of Lubberger Lehment (Andreas Lubberger – lead, Eva Maierski and Kai Schmidt-Hern, all partners). We worked closely together on the case.
I believe on cases like this it is important not to have teams that are too big, but to have a few people who are very closely involved.
Was this the first time you have been before the CJEU? How does it compare to national courts?
Yes, it was my first time before the CJEU as opposed to Andreas Lubberger who has represented clients earlier in other cases. It is difficult to compare these proceedings to proceedings before Polish national courts. If at all, these proceedings could be compared to proceedings before the (Polish) Supreme Court, which like the CJEU is a court of law.
The differences lie with the organisation of the hearing. For example, before the CJEU the time granted to parties is strictly limited, the proceedings are translated simultaneously to a number of languages and the court in advance provides questions or topics to be addressed at the oral hearing within a limited time. This is special as compared to Poland. What is similar though are the questions from the panel of judges – in Poland, judges also tend to ask questions during the hearing to understand the case better.
What did you think of the CJEU judges? Did they have a good understanding of the issues?
They were outstanding lawyers, very well prepared. I also want to mention the translation service. They do a excellent job of translating between languages. The language of the proceedings was Polish so they had to translate for all the judges. It’s a really well-oiled machine in Luxembourg.
What have been the biggest challenges in the case and how have you overcome them?
To present all our arguments in a 15-minute oral presentation. Also, at the written stage we had to carefully select our arguments within the 20-page limit. In such complex cases, this is one of the biggest challenges.
We have overcome this challenge with preparation, discipline, and teamwork. We prepared a long list of arguments and over about two months, we decided what we wanted to focus on, and what was the key message. Also, you can’t repeat what you have already submitted in writing so it’s a real challenge to say something new and convincing.
What’s the next stage in the case?
The case will return to the Polish court and we shall see. The CJEU provided binding guidelines to the Polish court. I should not discuss the potential outcome of the pending proceedings before the Polish court. We expect to have a hearing in about three months and a first-instance decision by the summer.
Is it important for the firm to be involved in high-profile cases such as this?
It is. It challenges and motivates us. It shows also our capabilities and quality. This particular case was also a perfect example of how two independent law firms from different countries, cooperating based on trust, can work together on a pan-European project.
Finally, this is very good advertising and verification of our decision to be an independent boutique IP law firm with a strong international network.
In the legal profession, our cases and track record speak for us. We have had great feedback because of this case. Many of our colleagues – lawyers from different countries – have shown interest in this matter. Lastly, it is a great reward for a lawyer to have an impact on the shape of the law.
I think we will see more referrals from Poland as the intellectual property courts have been reorganised and we are getting more and more IP cases. Also, the economy is growing so there will be more disputes and more reasons to refer questions to the CJEU.
To read the previous instalment of our ‘Behind the case’ series, in which we spoke to a partner at Brandsmiths about how they secured a trademark victory for sportswear brand Umbro, click here.
