Whilst Christmas may be a fading memory, the European Court of Justice’s ruling in Adam Opel AG v Autec AG has brought toys back into the spotlight.
Opel complained that a toy manufacturer, Autec, which sold in Germany remote-controlled models of the Opel Astra V8 coupé bearing Opel’s lightning logo on their radiator grilles was infringing Opel’s trade mark for that logo, registered in respect of both motor vehicles and toys.
At first sight it might have seemed that Autec had no defence, since they were using the identical mark for identical goods, namely toys. However that would be an over-simplification.
The ECJ ruled that infringement will only have occurred if Autec’s use of the logo affects the trade mark’s function of guaranteeing the trade origin of goods. What the national court in that case will therefore have to decide is whether the average consumer of toys in Germany would regard toys bearing the Opel logo as an indication that those products come from Opel or an undertaking which is economically linked to Opel, for example through some form of licensing arrangement. If the answer to that question is yes, then infringement will have occurred.
Assuming that the Opel logo is a famous mark, infringement will also have occurred if the use of the logo without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the logo. Again the ECJ left this question for the national court to assess as a factual matter, without giving any further guidance on the issue.
What the ECJ made clear is that use of a logo on the grille of a toy car does not fall within the defence relating to uses of indications as to the kind, quality or other characteristics of goods. That use was simply a result of the desire to produce a faithful reproduction of the car in question and was not intended to provide an indication as to a characteristic of the toys. Toy and car manufacturers alike will no doubt await the German national court’s ruling with bated breath since it is likely to have ramifications throughout Europe.