## Facts

- Audi AG and Dr. Ing. h.c. F. Porsche AG owned registered Community designs covering alloy wheel rims used on their vehicles.
- Acacia Srl manufactured and marketed replica alloy wheel rims that reproduced those designs.
- In Italian proceedings, Audi (and a distributor) alleged design infringement based on rims identical to Audi’s originals; Acacia asserted the Regulation No. 6/2002 “repair clause” as a defense.
- In German proceedings, Porsche alleged infringement based on rims identical to its designs and rims differing in size and color; Acacia and its managing director again relied on the repair clause.
- Some rims bore “NOT OEM” markings and were accompanied by materials stating they were sold exclusively for repair purposes.
- Two national courts referred questions to the Court of Justice of the European Union in preliminary-ruling procedure; the references were joined.

## Issues

1. Whether the Regulation No. 6/2002 repair clause applies only to component parts whose design is dependent on the appearance of the complex product, or to any component part of a complex product.
2. Whether “repair . . . so as to restore [a complex product’s] original appearance” requires the replacement part to be visually identical to the original, or allows variants (e.g., different size or color).
3. What conditions of use and supplier obligations must be satisfied for a non-rightsholder manufacturer or seller to rely on the repair clause, including any duty to prevent non-repair uses.

## Decision

- The court held that the repair clause is not limited to component parts whose design is dependent on the appearance of the complex product; alloy wheel rims may qualify as component parts covered by the clause.
- The court held that the clause applies only when the replacement part has an identical visual appearance to the original part incorporated when the complex product was first placed on the market; differences in size or color fall outside the clause.
- The court held that reliance on the clause is limited to use exclusively for repair to restore the complex product’s original appearance; uses aimed at changing appearance are excluded.
- The court held that non-rightsholder manufacturers and sellers may invoke the clause only if they take adequate measures (e.g., labeling, documentation, contractual terms) to ensure parts are offered and sold solely for qualifying repair, and they avoid conduct that encourages other uses.
- The court left application of these interpretive rules to the referring national courts.

## Legal Principles

- Regulation No. 6/2002’s repair clause excludes Community design protection for a component part of a complex product only when the part is used to repair the complex product to restore its original appearance.
- “Component part of a complex product” is not restricted to parts whose design is dictated by the complex product’s appearance; the operative text does not impose a “dependence” requirement.
- “Restore original appearance” requires visual identity between the replacement part and the original part as marketed; alterations in features such as size or color are outside the clause.
- Because the repair clause is an exception to design protection, its application is subject to strict conditions and limits tied to repair and restoration.
- A non-rightsholder supplier must exercise due diligence to confine downstream use to qualifying repair, including adopting reasonable preventive measures and not supplying where it knows or should know of non-qualifying uses.

## Conclusion

The court interpreted the Community design repair clause broadly as to eligible component parts but narrowly as to permissible replacements and uses, requiring visually identical parts used solely to restore the product’s original appearance and imposing a diligence obligation on non-rightsholder suppliers to prevent non-repair exploitation.


Acacia Srl v. Audi AG & Porsche AG, Joined Cases C-397/16 & C-435/16 (C.J.E.U. 2017)