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Model Makers, Car Manufacturers and Trade Marks
A recent legal decision from the European Court of Justice (ECJ) has highlighted some potentially important points concerning the production of model cars that use the recognised Trade Marks of the genuine car manufacturer.
Adam Opel AG had sued Autec AG, a model car manufacturer, for producing an unauthorised remote controlled scale model of an Opel car that featured a copy of the well-known Opel badge (below) on the radiator grille. The proceedings were launched in Germany, and some of the points raised were referred to the ECJ for clarification.
Adam Opel AG claimed that this use of the Opel Badge was an infringement of their registered Trade Mark, which is registered in respect of 'cars' as well as 'toys'.
Autec AG offered the defence that their use of the Trade Mark was purely intended to convey descriptive information about the model, i.e. that it was an accurate model of an Opel car. In essence they claimed that they were not using the Opel badge as a Trade Mark, and that such use should be allowable.
The ECJ held that:
1) in theory, Adam Opel AG are entitled to enforce their Trade Mark registration against Autec AG, if the use of the Trade Mark by Autec AG is likely to be viewed by the relevant toy consumer as indicating a connection with Adam Opel AG,
2) Adam Opel AG are entitled to entitled to enforce their Trade Mark registration against Autec AG, if it can be proved that use of the Trade Mark by Autec AG is likely to take advantage of, or damage, the reputation of the Opel badge and,
3) use of the Opel Logo by Autec AG was not allowable use as a description of a characteristic of the products (model cars). The Court felt that the nature of use went beyond this role, and instead was being used to indicate that the models were a faithful reproduction of the original. In the Court's view this was not a permitted use under the current interpretation of the law.
The initial impression given by this decision is that it appears to strengthen the hand of the Trade Mark owner, and could potentially place several difficult legal obstacles in the path of the model manufacturer.
However, at the moment this is only true at the theoretical level, since Adam Opel AG still face a considerable hurdle before they might be able to obtain any form of legal injunction against Autec AG. In particular they need to prove that the average consumer of model cars would believe that the use of the Opel badge by Autec AG indicates some form of trade connection (perhaps a licence or permission of some sort) with Adam Opel AG.
Despite these difficulties, the decision has weakened the legal defences of model producers, even if ultimately some defences may remain. Therefore this decision may give rise to a series of legal disputes between car manufacturers and producers of unauthorised model vehicles.
The comments of the ECJ have now been returned to the German courts for a final decision to be made, and this is awaited with interest.
