PRACTICE: THE OPEL-BLITZ-II CASE JURISDICTION REPORT: GERMANY
TRADEMARK FUNCTIONS IN Jens Künzel Krieger Mes & Graf v. der Groeben
Te decision in Opel-Blitz II, handed down by the Federal Supreme Court of Germany in January 2010, concerns the use of a trademark of a well- known German automobile manufacturer on miniature replica toy cars. Te decision ends a dispute that began in 2004.
Te trademark of the plaintiff automobile manufacturer, a horizontal flash whose ends cross the boundaries of a circle, was used by the defendant on a miniature version of the plaintiff’s original car model. Te car toy’s packaging also showed the name of the manufacturer ‘Autec’ on its back, and the toy’s manual showed the manufacturer’s trademark ‘Cartronic®’. Te plaintiff attacked the use of the ‘flash’ on the car toy as an infringement of its trademark, which covered ‘automobiles’ as well as ‘toys’. Te claim was based first on an identical infringement of the trademark in so far as it covered toys. A second line of argument was that the trademark was a well-known trademark for automobiles, and that its use in the context of a miniature car model made unfair use of its reputation.
Te first instance court referred the case to the European Court of Justice, which issued a preliminary ruling in 2007. Te ECJ answered the first instance court’s questions as follows:
• The identical use of the trademark for identical goods is a use within the meaning of article 5 paragraph (1) of the Trademark Directive only if the use affects the functions of the trademark as a trademark for toys
• The use of the trademark, as far as it covers automobiles, for toys is inhibited according to article 5 paragraph (2) of the Trademark Directive (protection as well-known trademark) if the reputation or goodwill of the trademark is unfairly used without legitimate reason.
Te case was remitted back to the first instance court, which dismissed the action. Te appeals court and Federal Supreme Court confirmed the decision.
According to the Federal Supreme Court, there was no infringement of the plaintiff’s trademark as far as it covers toys. Te ECJ had ruled that the trademark’s functions were affected by a third person’s use of the trademark only if the relevant public understood the trademark on the toys as an indication that the product in question originated in the business of the trademark owner. Te appeals court had ruled that although the public recognised the trademark (the Opel ‘flash’) as such and associated this mark with the mark used on the automobiles of the plaintiff, it did not understand the mark to mean that the toy that carries it originates in the business of the plaintiff. Terefore, the trademark’s function (to guarantee the origin of the product from a certain business) could not be affected. Tis was supported by a market survey provided by the plaintiff, which showed
www.worldipreview.com
“ THE ECJ HAD RULED THAT THE TRADEMARK’S FUNCTIONS WERE AFFECTED BY A THIRD PERSON’S USE OF THE TRADEMARK ONLY IF THE RELEVANT PUBLIC UNDERSTOOD THE TRADEMARK ON THE TOYS AS AN INDICATION THAT THE PRODUCT IN QUESTION ORIGINATED IN THE BUSINESS OF THE TRADEMARK OWNER.”
that 38 percent of the persons asked and 48 percent of the actually relevant public were of the opinion that Autec/Cartronic was the manufacturer of the toy. It was irrelevant whether the public concluded from the ‘copying’ of the actual car (Opel) that the manufacturer of the toy and the plaintiff had a licensing relationship, because this assumption was based on the copying and not on the use of the flash trademark, so that the trademark’s function could not be regarded as affected.
Neither could the plaintiff invoke protection of the flash under the aspect of unfair use of a well-known trademark for automobiles. ‘Unfair use’ covers cases where the reputation of the trademark is exploited by transferring it to other goods. In this case, the Federal Supreme Court confirmed the appeals court’s ruling that the potential transfer of reputation from the automobile to the car toy could not be regarded as ‘unfair’, since this would require that the manufacturer of the car toy exploited the reputation of the original automobile beyond the mere fact that the car toy was a faithful replica of the original automobile.
It was irrelevant that the sales of the toy depended to a decisive degree on the fact that the toy faithfully replicated the original, and that 85 percent of the car toy market comprised licensed replicas. Te Federal Supreme Court held that neither aspect established unfairness of use. Te assumption of the public that all or most of the car toys were licensed did not have the required link to the use of the flash trademark.
Finally, no detrimental effect on the reputation of the flash mark could be established, since it seemed far-fetched that the bad quality of the toy negatively affected the reputation of an actual automobile.
Jens Künzel, LLM, is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at:
jens.kuenzel@krieger-mes.de
World Intellectual Property Review November/December 2010 83
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108