NETHERLANDS Trends and Developments Contributed by: Radboud Ribbert and Wouter van Wengen, Greenberg Traurig, LLP
In this case, the alleged infringer had created an encyclopedia titled after Jiskefet. The trade mark holders of the name “JISKEFET” sued for unauthorised use. However, the Dutch Supreme Court ruled that there was no infringement, as using the name was the only way to clearly indi - cate that the encyclopedia was about Jiskefet. However, in the same month as the Inditex v Buongiorno case, the CJEU placed important guardrails on the expansion of referential use. Audi v GQ (CJEU, C-334/22) centres on the question of whether the use of a trade mark for spare parts can be considered “referential use”, an exception under Article 14(1)(c) of the EU Trade Mark Regulation. The case involves GQ selling non-original radiator grilles for vehicles that bear a design similar to the Audi trade mark, particularly designed to affix the Audi emblem. In its judgment, the CJEU ruled that such use does not qualify as referential use. The court emphasised that referring to a trade mark as part of a spare part does not fall within the permis - sible scope of referential use if the purpose is to sell or promote the part as a standalone prod - uct, not just to identify its purpose or compat - ibility with the original vehicle. The ruling marks a distinction between use for identification (like referring to a product’s function or origin) and using the trade mark in a way that could con - fuse consumers about the product’s source or authenticity. This decision underscores that while certain forms of referential use are allowed under EU trade mark law, using a trade mark merely to indicate the compatibility of a third-party prod - uct (like a car part) does not always meet the cri - teria for such use. The ruling further clarifies the limits of referential trade mark use, particularly
in industries like automotive spare parts, where such use is often contested. Copyright Expansion for International Works of Applied Art The Court of Justice of the European Union (CJEU) has ruled in the Kwantum v Vitra case (24 October 2024), marking a significant shift in EU copyright protection for applied art originating outside the EU. The ruling clarified how works of applied art are protected under EU law, over - riding the “material reciprocity test” in favour of harmonised copyright protection. Vitra Collections (a Swiss company) claimed that Kwantum’s “Paris Chair” infringed its copyright for the DSW chair, designed by Charles and Ray Eames in the USA (not protected by copyright in the USA). A Dutch lower court ruled in favour of infringer Kwantum, but the Court of Appeal overturned this, siding with plaintiff Vitra. Kwan - tum then appealed to the Dutch Supreme Court (Hoge Raad), arguing that the Court of Appeal improperly applied the “material reciprocity test” under Article 2(7) of the Berne Convention. This prompted the Hoge Raad to seek clarification from the CJEU on the test’s compatibility with EU law. The CJEU confirmed that copyright protection for applied art under Directive 2001/29 does not depend on the work’s origin or the author’s nationality. A work classified as a “work” under EU law must receive copyright protection across all member states, regardless of whether it is protected in its originating country. The material reciprocity test was deemed incom - patible with Directive 2001/29, as it undermines the goal of harmonised copyright protection within the EU. Allowing member states to apply
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