According to Art. 110 “…protection as a Community design shall not exist for a design which constitutes a component part of a complex product…for the purpose of the repair of that complex product so as to restore its original appearance.”. The aforementioned clause aims to avoid a situation of monopolistic behaviour by stimulating the competition between the parties operating in the spare parts sector.
Based on such rule, ACACIA started, back in 2012, an action for a declaration of non-infringement of DAIMLER’s registered designs. The German company was represented by Barzanò & Zanardo’s lawyers F. Fischetti and F. Celluprica.
Following the evidence taking, the Court found that the dimensions and colours of several wheel rims’ copies (i.e. exact reproductions) produced by ACACIA are not identical to the original ones commercialized by Daimler. The Court has claimed that, although the wheel rim must be considered as a spare part, the “repair” clause operates only when the reproduction of third parties’ design is effective and complete, and, therefore, does not extend to models identical in the design but differing from the original ones for dimensions or colours. In this latter case, restoring the original aspect of a vehicle cannot be interpreted as a repairing activity.
Moreover, the Court has stated that the burden to prove for which specific models of vehicles such reproductions have been intended to lays on the producer of the wheel rims’ copies.
Lastly, the decision is partial – the judgment will proceed for damages quantification – and is subject to appeal.
