Hello!
I have a question about aftermarket parts for cars. I am planning to sell aftermarket car parts. I am not going to sell them as genuine and will only advertise them as aftermarket generic parts. However, the items are car emblems/badges that say the car make/model. Such as 'BMW', '330d', 'Porsche', 'Panamera', 'Turbo', 'S'.
Advise on permissibility on selling these items will be highly appreciated.
Aftermarket car parts that have logo
Re: Aftermarket car parts that have logo
Hi Uzi1,
There are three separate aspects to this: copyright in certain emblems such as the manufacturer's logos, design right in the parts themselves and registered trade marks associated with the emblems and words associated with the make and model of car concerned.
There have been quite a few court cases over the years which have established some but not all of the ground rules around this subject. In many of these cases, the issue has been slightly different, that is to say they were concerned with the use of the emblems or trade marks of motor manufacturers in connection with advertising or carrying out the repair of vehicles by companies who are not authorised dealers. The current law covering both trade marks and design right has been largely codified at the EU level - the Trade Marks Directive (EU) 2015/2436 and Council Regulation (EC) No 6/2002 for community designs being the current versions, respectively. To summarise the situation, perhaps a little simplistically, the unauthorised use of trade marks (words or emblems) by someone other than the owner in connection with services which relate to the trade mark owner's genuine goods is permitted provided that the use is fair and reasonable and not deliberately done to deceive the public as to the relationship between the owner and the unauthorised user. At the EU level the situation is best reflected by this finding of the Court of Justice of the European Union from a 1999 case (note that it refers to Article 5 of the first Trade Mark Directive, not the current one):
For design right, the use of aftermarket emblems or badges etc may be permissible in order to restore a complex component to its original appearance following a repair. Or, as the convoluted language of the Design Regulation puts it:
By far the trickiest aspect concerns copyright and so the rest of this reply will concentrate on that. Copyright infringement is a matter of strict liability. That means that unless there is a specified exception in law, copying someone else's artistic work is infringement even if it has been done unintentionally or innocently. However copyright does not apply to single words or proper names like BMW or Land Rover and so these can safely be used descriptively. Things get more complicated where the emblem or logo is a graphic which could be classed as an artistic work. The more complex or stylised the graphic is, the more likely it is that it will be afforded copyright protection. So for instance Mercedes's original 3 pointed star is very simplistic even though it is instantly recognizable; it is also very old, so any copyright that may once have existed in it has probably now ceased. Manufacturers recognise this problem and so they constantly tweak the design of their emblems in order to re-start the period of copyright protection. That said when protecting their intellectual property the manufacturers rarely use copyright law as the basis of their claims, preferring to rely on trade mark protection, and occasionally, design right.
So to conclude, the issue is something of a minefield, with different manufacturers having different attitudes to how much they will tolerate. BMW are particularly robust in protecting their rights, but all the major manufacturers take the issue pretty seriously because they make a lot of money from selling genuine spare parts and need to keep their authorised dealers happy. If you have prominent disclaimers in your advertising, and avoid as far as possible dealing in parts bearing logos as opposed to words such as Porsche, turbo etc, you should be on safer ground. However don't be surprised if you get a cease and desist letter or two, or occasionally find your items de-listed on Ebay and similar sites due to their VeRO system. By and large, rolling with the punches rather than fighting every so-called claim that comes your way will probably keep you out of court! If you are thinking of doing this on a large scale and maybe incorporating your company, you should get some specific legal advice first before investing too much in the business.
There are three separate aspects to this: copyright in certain emblems such as the manufacturer's logos, design right in the parts themselves and registered trade marks associated with the emblems and words associated with the make and model of car concerned.
There have been quite a few court cases over the years which have established some but not all of the ground rules around this subject. In many of these cases, the issue has been slightly different, that is to say they were concerned with the use of the emblems or trade marks of motor manufacturers in connection with advertising or carrying out the repair of vehicles by companies who are not authorised dealers. The current law covering both trade marks and design right has been largely codified at the EU level - the Trade Marks Directive (EU) 2015/2436 and Council Regulation (EC) No 6/2002 for community designs being the current versions, respectively. To summarise the situation, perhaps a little simplistically, the unauthorised use of trade marks (words or emblems) by someone other than the owner in connection with services which relate to the trade mark owner's genuine goods is permitted provided that the use is fair and reasonable and not deliberately done to deceive the public as to the relationship between the owner and the unauthorised user. At the EU level the situation is best reflected by this finding of the Court of Justice of the European Union from a 1999 case (note that it refers to Article 5 of the first Trade Mark Directive, not the current one):
However a later UK case from 2012, BMW v Round and Metal ltd set quite a high bar when it comes to the deception issue. In that case the defendants lost.Articles 5 to 7 of First Directive 89/104 do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create to the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings.
For design right, the use of aftermarket emblems or badges etc may be permissible in order to restore a complex component to its original appearance following a repair. Or, as the convoluted language of the Design Regulation puts it:
... it is appropriate not to confer any protection as a Community design for a design which is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the design is dependent and which is used for the purpose of the repair of a complex product so as to restore its original appearance
By far the trickiest aspect concerns copyright and so the rest of this reply will concentrate on that. Copyright infringement is a matter of strict liability. That means that unless there is a specified exception in law, copying someone else's artistic work is infringement even if it has been done unintentionally or innocently. However copyright does not apply to single words or proper names like BMW or Land Rover and so these can safely be used descriptively. Things get more complicated where the emblem or logo is a graphic which could be classed as an artistic work. The more complex or stylised the graphic is, the more likely it is that it will be afforded copyright protection. So for instance Mercedes's original 3 pointed star is very simplistic even though it is instantly recognizable; it is also very old, so any copyright that may once have existed in it has probably now ceased. Manufacturers recognise this problem and so they constantly tweak the design of their emblems in order to re-start the period of copyright protection. That said when protecting their intellectual property the manufacturers rarely use copyright law as the basis of their claims, preferring to rely on trade mark protection, and occasionally, design right.
So to conclude, the issue is something of a minefield, with different manufacturers having different attitudes to how much they will tolerate. BMW are particularly robust in protecting their rights, but all the major manufacturers take the issue pretty seriously because they make a lot of money from selling genuine spare parts and need to keep their authorised dealers happy. If you have prominent disclaimers in your advertising, and avoid as far as possible dealing in parts bearing logos as opposed to words such as Porsche, turbo etc, you should be on safer ground. However don't be surprised if you get a cease and desist letter or two, or occasionally find your items de-listed on Ebay and similar sites due to their VeRO system. By and large, rolling with the punches rather than fighting every so-called claim that comes your way will probably keep you out of court! If you are thinking of doing this on a large scale and maybe incorporating your company, you should get some specific legal advice first before investing too much in the business.
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
Re: Aftermarket car parts that have logo
Thank you very much for your detailed response.
I wasn't intending to sell anything with logos.
I was only planning on selling boot badges, such as, Porsche, Turbo, C250 etc. I already have companies trading on ebay/amazon and I was hoping to add the badges to our stock inventory.
Having read your response, I don't think I am going to go ahead with this as I don't think it's worth the potential stress it can bring along.
Appreciate your detailed response. Thank you!
I wasn't intending to sell anything with logos.
I was only planning on selling boot badges, such as, Porsche, Turbo, C250 etc. I already have companies trading on ebay/amazon and I was hoping to add the badges to our stock inventory.
Having read your response, I don't think I am going to go ahead with this as I don't think it's worth the potential stress it can bring along.
Appreciate your detailed response. Thank you!