On January 14, 2010, the German Federal Supreme Court (Bundesgerichtshof) ruled that Autec's toy cars did not infringe auto manufacturer Adam Opel GmbH's trademark rights, despite the appearance of Opel's trademark on Autec's toy car's grill.
The claimant, Adam Opel GmbH (Opel), a German automobile company which is now a wholly-owned subsidiary of General Motors, was the proprietor of the device mark referred to as the "Opel-Blitz" (pictured below) which covered both motor vehicles and toys.
AUTEC AG (Autec), a German toy-car company, produces and manufactures toy cars under the trademark CARTRONIC. Autec had allegedly produced and distributed miniature toy copies of Opel's Astra V8 Coupé (pictured below) all of which featured the Opel-Blitz mark on the miniature's grill.
Both Opel's automobile and Autec's toy car miniature displayed the Opel-Blitz mark in the same location on the respective car and toy.
Opel objected to Autec's manufacture and distribution of the Opel Astra V8 Coupé miniature, based on its existing trademark rights in the Opel-Blitz mark which covered both motor vehicles and toys, fearing confusion would arise among consumers.
Before ruling on the matter, the court of first instance, the Regional Court Nürnberg-Fürth, requested a preliminary ruling from the European Court of Justice (ECJ) on the matter. In decision C-48/05, the ECJ ruled that "affixing by a third party of a sign identical to a trade mark registered for toys to scale models of vehicles cannot be prohibited under Article (5)(1)(a) of the directive unless it affects or is liable to affect the functions of that trade mark." The ECJ also determined that it was the responsibility of the Regional Court Nürnberg-Fürth to determine how the average consumer of toys in Germany would respond to the issue. Namely, would this average consumer view the logo affixed to the toy model car's grill and assume that the toy was either 1) manufactured by Opel, or 2) that Opel and Autec were linked economically by license or other legal design? The Regional Court Nürnberg-Fürth in its May 2007 decision concluded, "No," holding that the average consumer would believe the logo featured on the toy car was simply part of the model, and thus would not assume that this logo signified a link between the toy car company and the automobile company and car upon which the model was based.
In its January 14, 2010 decision, the Bundesgerichtshof affirmed the Regional Court's ruling denying that the Opel-Blitz trademark had been infringed. Even though Bundesgerichtshof noted that the Defendant had affixed an identical mark, Opel's logo, on identical goods, namely, toys, this particular use did not rise to trademark infringement.
The Bundesgerichtshof reasoned that the use did not affect the main function of the logo, namely, to indicate the "trade origin" of the goods (toy cars). The use also failed to garner a negative consumer reaction, as the German toy consumer would only understand the display of Opel's logo on the toy car as an attempt to mirror the original Astra V8 in miniature version as much as possible. The consumer would not see the logo and assume that the toy car was manufactured by Opel.
Finally, Autec's use of the logo on its model Astra V8 toys did not rise to infringement of a mark with a reputation, as the use did not have detrimental effect on the reputation acquired under Opel's mark for motor vehicles. Thus, the Bundesgerichtshof dismissed the case, denying any trademark infringement relief to Opel.
A comment on the ECJ's initial ruling at the outset of the matter with respect to Article 5(1)(a) of the Trade marks Directive: The ECJ's decision is consistent with earlier case law which notes that infringement exists under Article 5(1)(a) only when the use by a third party harms a function of the trade mark, the guarantee of origin function being the most prominent of functions. The ECJ also appears to have widened this exception, insisting that the public must see a commercial link between plaintiff and defendant. Thus, the ECJ may have introduced, albeit indirectly, a "risk of confusion element" under Article 5(1)(a) of the Directive. Additional discussion on this point may be viewed at http://jiplp.oxfordjournals.org/cgi/content/abstract/3/8/507.
Vol. 53, June 2010