Bundesgerichtshof decides in the Opel/Autec toy car case

Author: Dr Birgit Clark (Rechtsanwältin)

German Federal Supreme Court (Bundesgerichtshof), advance press release No. 9/10 of 15 January 2010 concerning case I ZR 88/08 (‘Opel-Blitz II’) of 14 January 2010.

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq014

Applying the guidance provided by the European Court of Justice (ECJ) in Opel/Autec Case C-48/05, the Bundesgerichtshof has ruled that a car manufacturer cannot rely on its trade marks rights in order to prevent the marketing of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space.

Legal Context

In similar manner to Article 5 of the Trade Mark Directive 2008/95 (formerly 89/104), section 14(2) of the German Trade Marks Act (MarkenG) provides that
third parties shall be prohibited from using in the course of trade, without the consent of the proprietor of the trade mark,
any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is protected;
any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trade mark; or,
any sign which is identical with or similar to the trade mark in relation to goods or services which are not similar to those for which the trade mark is protected; where the trade mark has a reputation in the Federal Republic of Germany and where the use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of such trade mark.

The claimant, Adam Opel GmbH (Opel), was the proprietor of a device trade mark for the so-called ‘Opel-Blitz’ (in English: Opel Lightning), inter alia, 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. The defendant's toy cars included the Opel-Blitz device mark affixed to their grille.

While it was established that Opel had sold model cars through its dealer network and had a certain degree of reputation in such toys, it was also accepted the replica car market had existed in Germany for over a hundred years, since the end of the 19th century. The Court of First Instance, the Regional Court Nürnberg-Fürth, referred this matter to the ECJ for a preliminary ruling. In Case C-48/05, the ECJ 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.’ As such, it was up to the national court to ascertain whether the relevant German consumers would interpret the logo device affixed on the model toy as a reference to trade origin and wrongly believe that the model car was manufactured by (or an undertaking economically linked to) the claimant.


In light of the ECJ decision, the Regional Court (Landgericht) Nürnberg-Fürth dismissed the claimant's action. 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. This decision was upheld by the court of appeal (OLG Nürnberg, case reference 3 U 1240/07 of 29 April 2008).

In its 14 January 2010 decision, the Bundesgerichtshof confirmed this ruling, denying that there had been an infringement of the claimant's Opel-Blitz device mark under section 14(2) MarkenG.

The court found that the requirements of trade mark infringement under section 14(2)(1) MarkenG were met insofar as the affixing of the Opel-Blitz device mark on the defendant's toy car constituted use of a sign that was identical to the claimant's mark on identical goods (toys). However, in view of the Federal judges, this use did not affect the main function of the mark, which is indicating the trade origin of the goods (here, a 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 device would only be seen as a reproduction of a detail of the original car. The Bundesgerichtshof stressed that the relevant German consumers would not regard the mark affixed on a toy car as a reference to the trade origin of the toy car.

The court further took the view that 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 under section 14 (2)(2) MarkenG based on a likelihood of confusion.

Finally, the judges found that there was also no infringement under section 14 (2)(3) MarkenG 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.

Practical significance

The outcome of this eagerly awaited decision was not really much of a surprise, given the German consumers' perspective when it comes to model cars and bearing in mind that Germany's replica car market had existed since the beginnings of the automobile industry in the late 19th century. However, this case may have perhaps been decided differently in a different country, taking into account ‘local’ customs and views relating to (toy) cars. The following conclusion may be drawn from this judgment: to avoid a situation such as the one occurring in the German model car market whereby the relevant consumers do not necessarily associate a model car with the actual trade mark owner, trade mark owners may consider ‘educating’ consumers as to which merchandize producers are authorized to use their marks.

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