[Guest Post] Out the Door, Back In Through the Grille: Warsaw Court Reverses Audi Advantage

The IPKat has received and is pleased to host the following guest post by Katfriend Luigi Manna (attorney at Martini Manna & Partners), commenting on the Polish ruling following the CJEU's AUDI case. Here is what Luigi writes: 

At the beginning of 2024, the Court of Justice of the European Union (CJEU) issued its much-anticipated judgment in Audi (Case C-334/22), which addressed the delicate issue of trade mark use on spare car parts produced by independent third parties. The decision quickly drew widespread attention across the legal community, as it was seen to mark a new milestone in the evolving jurisprudence surrounding the intersection of intellectual property rights and the automotive aftermarket. It was, arguably, the most influential trade mark ruling since Ford (2015), and it triggered extensive commentary (IPKat here).

Most commentators, including me, viewed the judgment as a clear reinforcement of the legal position of original equipment manufacturers (OEMs) and many assumed it would pave the way for Audi's success in the underlying national litigation. Few could have predicted that the Polish court, which had submitted the preliminary reference, would eventually issue a ruling that ran directly counter to those expectations.

The Original Dispute

The case concerned non-original radiator grilles for older Audi models sold by a Polish distributor. These grilles included a space designed for the Audi emblem (four interlinked rings), a registered EU trade mark that also covers auto spare parts and accessories. Since the housing replicated the shape of the emblem, it inherently reflected the trade mark. Audi brought an action before the Warsaw Regional Court alleging trade mark infringement.

The Polish court referred the matter to the CJEU, seeking guidance on whether a component designed to accommodate a trade mark emblem could itself constitute a “sign” under Article 9 EUTMR, and whether the use could fall within the scope of Article 14 EUTMR.

The CJEU’s Clarifications

The Audi ruling – where the Court partially redrafted the referring judge’s question - clarified key legal points: 

• A shape reflecting a trade mark—even if designed to mount an emblem—qualifies as a “sign”.

• Integrating the sign into a product constitutes “affixing a sign to the product” and qualifies as “use in the course of trade” under Article 9 EUTMR.

The Court reaffirmed two key principles from Ford: 

• The “repair clause” in Regulation 6/2002 applies only to design rights and does not modify the interpretation of Article 9 EUTMR.

• Trade mark law already accounts for competition and free movement concerns through Article 14 EUTMR.

The Court, however, left it to the national court to assess whether infringement occurred under one of the three conditions in Article 9(2) EUTMR: identical sign/use (double identity), likelihood of confusion, or unfair advantage/detriment to a reputed mark.

Crucially, the Court emphasised that the alleged use must impair or threaten to impair one or more of the functions of the trade mark—the so-called “function theory”.

It also clarified that this was not a “referential use” under Article 14 EUTMR, since the grilles aimed to replicate the originals rather than inform consumers about their intended purpose.

Commentators, who saw Audi as bolstering OEM control over spare parts and anticipated that the car maker would win at the national level once the case returned before the Warsaw Court, had good reasons to do so. Both legal issues raised by the Polish judge were resolved in favour of the trade mark owner. Compared to Ford, which only ruled out the application of a design-specific defence to trade mark issues, Audi offered an interpretation firmly rooted in trade mark law, thus further narrowing defences available to aftermarket suppliers. Furthermore, post-Ford national decisions had increasingly sided with OEMs.

The Warsaw Court’s Decision

Contrary to expectations, in early 2025 the Warsaw Regional Court dismissed Audi’s action. This somewhat surprising result was made possible by the discretion left to the referring judge in applying Article 9 EUTMR.

Based on an English translation of the Polish judgment, here is a summary of the reasoning: 

• No identical sign: the court noted differences between Audi’s registered mark, which included “shiny silver elements,” and the defendant’s grilles, which lacked them.

• No confusion: consumers were unlikely to mistake the grilles for OEM parts, especially given the presence of disclaimers and the visibly lower quality of the product.

• Reputed mark considerations: the judge considered the Audi trade mark to be well known and therefore entitled to enhanced protection under Article 9(2)(c) EUTMR. Although confusion is not a required element under that provision, its absence was considered relevant in assessing whether the use was without “due cause”.

The court’s key finding was that the defendant had “due cause” to use a similar sign. Several elements contributed to this conclusion: 

• Access to parts: many older Audi vehicles remain in circulation in Poland, and Audi no longer produces replacement grilles for the relevant models.

• Environmental benefit: continued use of existing vehicles reduces the ecological footprint associated with manufacturing new cars.

• Good faith use: the distributor did not attempt to mislead consumers or take advantage of Audi’s reputation. The use of a similar but distinguishable design on aging, low-value vehicles did not damage the image of the brand.

The court concluded that the trade mark’s functions – such as indicating origin, preserving investment, or protecting advertising value – were not harmed. As such, the criteria under Article 9(2)(c) EUTMR were not met. 

Comment

Notably, the CJEU did not interpret or define “due cause” in its ruling, as it was not asked to do so – the referring Court could, therefore, have delivered the same conclusions without ever referring the questions. Considering that, some might view the Polish decision as a form of “corrective response” to an unsatisfactory preliminary ruling. This perception is reinforced by the court’s simultaneous claim that the likelihood of confusion is both irrelevant and still a factor to consider.

It is likely that the judgment has been or will be appealed, and if that is the case, it will be interesting to learn the outcome of the appeal.