Reproduction of a trademark on scale model cars
15.06.2007
Toy manufacturers frequently reproduce in miniature the original models created and sold by cars manufacturers, placing a particular importance on the exact reproduction of the original models by these miniatures. This practice can be a source of litigation, as showed by the judgment of the European Court of Justice of 25/01/2007.
FactsThe company Adam Opel AG, a car manufacturer, is the owner of the figurative trademark representing the Opel logo, filed in Germany for cars and toys.In 2004, the company Adam Opel AG noticed that the company Autec offered for sale miniature cars reproducing identically one of its models, on which the figurative trademark Opel had been reproduced.The Landgericht Nürnberg-Fürth, being in charge of this matter, considered that the reproduction of the trademark Opel can be prohibited only if it corresponds to a use as trademark.The German jurisdiction refers a preliminary ruling to the European Court of Justice, in order to know if the use of the trademark on toys corresponds to a use as trademark and in the affirmative, if the use of the trademark corresponds to an indication of a feature of the product, thereby justifying the use of the product.
Judgment of 25/01/2007 on the case C 48-05The ECJ first underlines that the Article 5, 1st paragraph of the Directive 89/104/EEC awards an exclusive right to the owner of a registered trademark, allowing him to prevent third parties from using it in the course of trade.The Court bases its analysis on the fact that the use of the trademark Opel by the company Autec has been made in the course of trade, without any authorization of its owner.Concerning the reproduction of the trademark for identical goods (toys in this particular case), the ECJ indicates that the reproduction of a sign can be forbidden only if it affects the essentials functions of the trademark, especially the function that guarantees to consumers the origin of the good.Moreover, on the basis of the reputation of the trademark Opel for cars, its reproduction on different goods (toys in this particular case), can be forbidden only if this use allows to take an unfair advantage of the reputation of this trademark.From the elements provided by the referring German jurisdiction, it seems for the ECJ that the German average consumer does not necessarily matches the car manufacturer with the making of its miniature model cars. In this case, the company Adam Opel would not suffer any damage.The referring court has to determine if the company Autec has affected the right of the trademark Opel or if it took unfair advantage of the reputation of this trademark.Moreover, the ECJ considers that the purpose of this reproduction is not to give an indication concerning a feature of this model, as the identical reproduction of the Opel logo constitutes only one element of the faithful reproduction of the original car.It follows from this judgment that the reproduction of a trademark on a miniature toy representing an original model named after this trademark cannot always be prevented by its owner, but only when the reproduction affected the right of the trademark or allowed to take an unfair advantage of the reputation of this trademark.
