On 14 January 2010 the German Federal Supreme Court (Bundesgerichtshof) has handed down its eagerly awaited decision in the Opel replica car decision (case reference I ZR 88/08 – Opel-Blitz II of 14 January 2010). While the full decision is not yet available, the Bundesgerichtshof has published a press release concerning this case (press release No. 9/10 of 15 January 2010 ) which the IPKat has summarised and translated below.
The first civil senate (I. Zivilsenat) has decided that a car manufacturer cannot rely on its trade marks rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space. The claimant, Adam Opel GmbH, was the proprietor of a device trade mark for the so-called "Opel-Blitz" covering motor vehicles and toys. Opel tried to prevent the distribution of toy cars manufactured by the defendant which were copies of Opel's Astra V8 Coupé car in a reduced scale including the Opel-Blitz device mark affixed to their grille.
The court of first instance, the Regional Court (Landgericht) Nürnberg-Fürth had referred this matter to the ECJ for a preliminary ruling. The ECJ (C-48/05) ruled that "the 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." In its decision the ECJ further took the view that it was "... for the referring court to determine, by reference to the average consumer of toys in Germany, whether the use at issue in the main proceedings affects the functions of the Opel logo as a trade mark registered for toys." The relevant question hence was whether the relevant consumers would interpret the logo device affixed on the model toy as a reference of trade origin and believe that the model car was manufactured by the claimant or a economically linked undertaking.
In light of the ECJ decision, the Regional Court (Landgericht) Nürnberg-Fürth dismissed the claimant's case. The Nürnberg-Fürth court (case reference 4HK O 4480/04 of 11 May 2007) decided that the relevant consumer would regard the logo affixed on a scale model car's grille merely as "part of the model car" and would not attribute the logo to the manufacturer of the original car in the sense of a reference of trade origin or believe that there was an economic link or a licence agreement in place between the toy car manufacturer and the manufacturer of the original car. The court of appeal (OLG Nürnberg, case reference 3 U 1240/07 of 29 April 2008) as well as the Bundesgerichtshof confirmed this view.
In its 14 January 2010 decision the Bundesgerichtshof denied an infringement of the claimant's Opel-Blitz mark. The requirements of trade mark infringement were met insofar as the affixing of the Opel-Blitz device on the defendant's toy car constituted use of a sign that was identical to the claimant's mark on identical goods (toys). However, this use did not affect the main function of the mark, which is indicating the trade origin of the goods (here: toy car), nor did this use affect any other functions of the trade mark because the relevant consumer would merely regard the Opel-Blitz device affixed on the defendant's model car as an exact copy of the mark that the original car had affixed on exactly the same space. Consequently, the Opel-Bliz mark would only be seen as a reproduction of a detail of the original car. The court stressed that the relevant consumers would not regard it as a reference to the trade origin of the toy car.
Insofar as the claimant's mark was registered for motor vehicles, the goods concerned (model cars and motor vehicles) were not similar so that there was no trade mark infringement based on a likelihood of confusion.
Finally, there was also no infringement of a mark with a reputation because there was no unfair advantage taken of or detriment caused to the repute of the claimant's mark insofar as it was registered for motor vehicles.