Small models, big trouble – Can model cars and buildings infringe trade marks?

The CJEU held in Adam Opel that the use of a car manufacturer’s trade mark on model cars, registered for cars and toys, can constitute trade mark infringement. Subsequently, the German Supreme Court denied an infringement claim in Opel-Blitz II (discussed here), given the specifics of the German model toy market and the relevant public’s perception of the trade marks used on model cars.

In its recent DACHSER judgment (I ZR 86/22), the German Supreme Court had the opportunity to decide whether this jurisprudence also applies to the use of service marks and model buildings.

Background

The plaintiff Dachser SE (‘Dachser’) is a logistics company. It owns German trade marks no. 302008052945 and no. 302009028020 registered for goods and services in classes 9, 35, 39, and 42 related to logistics and transport. Dachser uses its trade marks inter alia on trucks and warehouses.

The defendant Gebr. Faller GmbH specialises in model-making and sold the following models of a truck and warehouse:
 

The truck is a model of a real-life truck (manufactured by Mercedes-Benz) as used by Dachser for its services. The model warehouse does not replicate a real-life warehouse, but it does replicate essential characteristics that all Dachser warehouses have in common. Still, the model warehouse differs in certain aspects, such as the marking of the roller doors and the positioning of the trade mark on the model.

Dachser considered the use of its trade marks to be infringing and sued Gebr. Faller GmbH. The District Court of Cologne agreed with Dachser. On appeal, the Higher Regional Court of Cologne reversed the lower court’s judgment and dismissed the action. Dachser appealed to the Supreme Court.

The Supreme Court’s decision

The Supreme Court confirmed that the use of the trade marks on the models is not infringing.

No likelihood of confusion

A finding of likelihood of confusion was denied because there is no similarity between the models, on the on hand, and the logistics and transport-related goods and services in classes 9, 35, 39, and 42, on the other.

Referring to its Opel-Blitz II judgment, the Supreme Court stated that trade mark infringement would not apply even if Dachser’s trade marks had been registered for model toys. Model makers have been selling models of real-life vehicles bearing the original trade marks on the models for decades in Germany. As a result, German consumers perceive the use of “DACHSER” on the models in question not as an indication of the commercial origin of the models but as a part of the representation of the real-life truck as used by Dachser. Therefore, the use of the plaintiff’s trade marks by the defendant does not affect the origin function of the mark.

Due cause for claims based on trade mark with a reputation

The Supreme Court also denied claims based on a trade mark with a reputation under Sec. 14(2) no. 3 German Trade Mark Act (implementing Art. 10(2)(c) EU Trade Mark Directive into German law). According to this provision, a trade mark owner may prevent use of a sign where the sign is identical with, or similar to, a trade mark with a reputation in an EU Member State and where use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The Justices conceded that the defendant's use of Dachser’s trade marks takes unfair advantage of their distinctiveness and reputation. The depiction of the trade marks on the models increases their appeal and can be an incentive for collectors to purchase the models.

However, the Supreme Court found that there is a justifiable reason (i.e. ’due cause’) for the defendant's taking advantage of Dachser’s trade marks. Replicating a real-life vehicle as a model necessarily includes applying the trade mark as used on the actual vehicle. This is not objectionable, if the trade mark is not used in a promotional way that goes beyond the mere use as a representation of the original vehicle.

This applies not only when the plaintiff owns trade marks for ‘cars’ (as in Opel-Blitz II) but also when the trade mark is registered for services. Model makers have a legitimate interest to use a trade mark, even where the trade mark is used to promote services, such as on the side of a truck.

The Supreme Court applied the aforementioned reasoning to the model of the warehouse, even though the model does not replicate an actual building. In principle, the model must be a detailed representation of the original object. The Justices mentioned the following situations where this condition is not met and the trade mark owner can successfully challenge the use of its trade mark:

• The trade mark is used for a car that does not imitate a real-life vehicle;
  
• The trade mark does not appear in the same place as on the original car;
• The logo of the main sponsor as it appears on the original race car is replaced by the manufacturer’s mark on the model.

In the present case, the fact that the model is not replicating a real-life building is deemed not to be decisive because the relevant public knows that buildings, even those of the same company, are usually not identical but differ, for instance due to their location or the size of the land. What matters is that consumers perceive the model as a representation of a typical building of Dachser with its characteristic features.

Comment

This seems to be a case where the relevant public has become accustomed to a specific type of trade mark use over the decades, such that it can no longer be deemed to be infringing the mark as a source indicator (anymore). This result is fact-driven based on the relevant national public’s perception of model toys, meaning that the result could differ in other EU Member States.

The Supreme Court now has the opportunity to decide whether the judgment discussed above also applies to 3D trade marks. The Higher Regional Court of Hamburg (case no. 5 U 61/21) held, before the Supreme Court’s judgment was published, that the use of Volkswagen’s 3D German trade mark no. 30627911 (registered inter alia for vehicles and model cars) for the famous ‘Bulli’
 

was infringed by various model Bullis:
 

The lower court found that the relevant public expects at least a licensing agreement between Volkswagen and the model car manufacturer because car brands are used for merchandising purposes. A model manufacturer does not have a legitimate interest to use the 3D mark without such a license. The defendant has appealed this decision to the Supreme Court (pending under case no. I ZR 23/23). It will be interesting to see whether the Supreme Court confirms its prior jurisprudence, or asks the CJEU for a preliminary ruling.