The famous German car manufacturer Adam Opel GmbH, the owner of the Opel logo (which may be described as a circle with a thunderbolt), has been forced by the German Federal Supreme Court to accept that its logo may be fixed to toy cars without its consent. This judgment has finally resulted following the application by the German District Court of the European Court of Justice's (ECJ) guidance and two further appeals in the German proceedings.

On 14 January 2010, the German Federal Supreme Court held that a manufacturer which produces toy cars designed to appear identical to the original cars – including an identical placement of the trade mark found on the original - does not infringe that trade mark (I ZR 88/08; the grounds for the decision are not published yet).

In this case Adam Opel GmbH (Opel) had registered the Opel logo as a device trade mark with the German Patent and Trademark Office for the goods - toys and cars. The toy manufacturer Autec AG (Autec) produces remote-controlled toy cars which look exactly like the original car: the Opel Astra V8 Coupe (which was manufactured by Opel). The dispute between the parties arose from the fact that the Opel logo was also fixed by Autec to its toy car in the same place as on the original Opel car.

Opel filed a claim against the toy manufacturer with the District Court Nürnberg-Fürth based on trade mark infringement. Opel argued that Autec was not entitled to use Opel's logo on its model cars. In Opel's view, customers would assume that the manufacturer and distributer of toy cars which imitate a certain original car, did so based on a license issued by the trade mark owner.

Autec, however, asserted that it had fixed the signs "Autec AG" and its own trade mark "CARTRONIC" on the front page of the instructions for use and on the back side of the remote control which comes with each toy car. In its view, it would therefore be obvious to customers that the toy car did not originate from the manufacturer of the real car; Opel. Autec further stated that customers are used to the fact that the toy industry has produced imitations designed to be true to the original for more than 100 years. This included attaching an imitation of a logo to the toy in the same place where it is fixed to the original.

The District Court Nürnberg-Fürth referred questions to the ECJ in order to receive a preliminary ruling in this dispute. The District Court raised the question of whether the use of a trade mark on the imitation of a downscaled size model car was a trade mark infringement. On 25 January 2007, the ECJ handed down its ruling (C-48/05) based on Articles 5(1)(a), 5(2) and 6(b) of Directive 89/104/EEC.

In its ruling, the ECJ left it to the District Court Nürnberg-Fürth to decide, as a matter of fact, whether or not the relevant customers understand the Opel logo, placed on the toy cars, to be an indication that the toy cars originate from Opel or from a company which is economically linked with Opel. If they did not there could be no damage to the essential function of the mark.

Based on this preliminary ruling of the ECJ, the District Court Nürnberg-Fürth dismissed Opel's claim. The District Court held that the relevant customers would perceive the small sized imitation of the original trade mark which is fixed on the same position as on the original car as being part of the toy car. In the opinion of the District Court, the customers would neither consider such toy cars as being produced by the manufacturer of the original car nor would they assume that an economical relationship exists, including a relationship based on a license agreement, between the manufacturer of the original car and the manufacturer of the toy car. The judgment of the District Court was confirmed by the court of appeal. However, Opel also appealed this decision.

Now the Federal Supreme Court of Germany has finally dismissed Opel's claim in the appeal proceedings. The court held that the rights of the trade mark owner, Opel, were not infringed in this case. According to the Federal Supreme Court neither the essential function of a mark (as an indication of the origin of the goods) nor the other functions of the mark were affected by such acts. This was because customers consider the Opel logo as fixed to the toy cars only as a reproduction of the mark needed to make the toy true to the original. The sign would be seen only as reproduction detail of the real car, not as indication of the origin of the toy cars.

The Federal Supreme Court further held that as far as the trade mark of Opel is registered for cars, the goods in question, toy cars and cars, are not similar. Accordingly there was no likelihood of confusion. The court also denied Opel's claims based on taking unfair advantage of, or causing detriment to, the reputation or distinctive character of its trade mark as far as it is registered for cars.

Comment

The question of whether the replication of a trade mark on a toy, which is an imitation of the original, can amount to trade mark infringement, has been debated for a long time in Germany. Contrary to decisions of lower instance courts in Germany, the majority of authors in the judicial literature have considered this use to be trade mark infringement. However, the judgment of the German Federal Supreme Court has now decided this question, by confirming that using a trade mark as part of a model only as a means of imitating the original product is not trade mark infringement.