Nothing is lost beforehand when it comes to defending intellectual property rights from small or large-scale reproductions of a product. The scope of protection and the scenarios in which you can enjoy such protection will depend on the type of IP rights on which you rely.
Think for example of a handbag by a well-known clothing brand. What would happen if a third party were to decide to make a replica miniature of the original handbag including the brand, to sell it as a toy accessory for dolls? To protect our rights, we could resort to three different types of IP rights: trademarks, industrial designs and copyrights.
The debate surrounding the use of intellectual property rights in scale reproductions largely derives from the judgment by the Court of Justice of the European Union (CJEU) in the Opel c. Autec case (C-48/05).
In that case, the vehicle manufacturer Opel sued Autec for trademark infringement, due to its unauthorized marketing of a 1:24 remote-controlled scale model of the Opel Astra V8. The miniature was a faithful reproduction of the Opel car and, as such, included the manufacturer’s mark in the same position as on the original vehicle. It should be underscored that Opel had registered its mark not just for automobiles (class 12), but also for toys (class 28).
Autec’s initial defense was that the use of the mark was descriptive (current article 14.1 b) of the EU Trademark Regulation). This theory was rejected by the CJEU. In its judgment, the European court held that the use of the trademark on a scale model of the manufacturer’s original vehicle could constitute infringement if it affected the functions of the trademark. In other words, Opel could prohibit the use of its mark on miniatures if, due to affixing the mark, the relevant public believed that the remote-controlled car had been manufactured by Opel or by a company that collaborated with Opel, if this was not the case.
The German court that had referred the question to the CJEU determined that the relevant public would see the Opel logo as part of the faithful reproduction of the original vehicle and not as an indication of the business origin of the remote-controlled toy. It therefore held that there had been no trademark infringement and that Opel could not oppose the use of its mark on the toy.
However, this case should not be interpreted as giving free reign to the use of third party trademarks on scale models of their products. Nothing could be further from the truth. As the CJEU quite rightly indicated, it depends on whether, in each particular case, this use of the trademark may affect the trademarks’ functions. We should also bear in mind that the conclusions in relation to a particular scenario can vary from one market to another according to the actual characteristics of the relevant public in each case.
Consequently, the results in the Opel case cannot be extrapolated to scale models of other articles. To see whether the manufacture of replicas of a product to create toy versions or large scale exhibits infringes the trademark rights of the original owner, the matter must be addressed according to the circumstances involved in each case and from the standpoint of the relevant public.
In the case of registered designs, the protection afforded to the owner includes not only identical reproductions, but rather any design that does not produce a different overall impression on the informed user. The comparison should therefore be made between the registered design and the product that has presumably been infringed. Therefore, the size of the conflicting goods would be out of the equation, unless the registered design contains a specific reference to size. This was the position adopted by the Spanish courts in the Perfetti v. Fiesta case.
In that case, Perfetti argued that the lollipop-shaped sweet container marketed by Fiesta infringed its registered design, which protected a sweet container in the form of Chupa-Chups candy. The first instance judge argued that the impression produced by the confronted products was different. However, since Perfetti had a registered design, the comparison had to be made between the design and the purportedly infringing Fiesta product, which did produce a similar overall impression (see first instance judgment here).
Therefore, the situation changes depending on whether the design is registered or not. If no design is registered, the conflicting products have to be compared directly to determine whether or not they produce a different overall impression on consumers. Consequently, size is one of the factors that needs to be taken into account when assessing such overall impression.
Finally, protection can also be granted by copyright. Copyright protection is not limited to works of art in the conventional or strict sense of the word. Following case law by the CJEU in the Cofemel (available here) and Brompton cases (available here), works of applied art that enjoy subjective originality, i.e., that reflect their author’s free and creative decisions, can also be protected by copyright.
From that standpoint, scale models of a work can constitute both an unauthorized reproduction or an unlawful transformation of the work. Whether it is one or the other depends on whether the replica constitutes a faithful reproduction, or if it includes a variation and whether the modification of the dimensions is sufficient to give rise to a new work that is different from the original. A ‘foreign’ example is the Bloom v. The Grove Garden case (Dutch judgment available here). In this case it was held that the increase in size of the product – a translucent flower pot with inbuilt lighting – had altered the relationship between the different components of the plant pot and therefore, gave rise to a new work.
In short, as far as IP protection is concerned, size does matter. The final answer will depend in each case on the analysis of the specific circumstances involved and on the means of protection used.