The German automaker Opel cannot rely on trade mark rights in its famous lightning blitz device for cars and toys to prevent the distribution of scale models of its cars. This was the surprising outcome of the German Federal Supreme Court's (Bundesgerichtshof's) long-awaited verdict in the Opel toy car case ("Opel-Blitz II," BGH, 14 January 2010, I ZR 88/08).
The claimant, Adam Opel GmbH, is the proprietor of a German trade mark registration for the famous Opel-Blitz device, covering motor vehicles and toys. The defendant manufactured and distributed radio-controlled toy cars that were copies of the Opel Astra Coupé car in a reduced scale, which featured the Opel-Blitz logo affixed to the grille. Opel tried to prevent sales of the models by suing the defendant for infringement of the trade mark registration for the Opel-Blitz logo.
The court of first instance, the Regional Court (Landgericht) Nürnberg-Fürth, referred the matter to the ECJ for a preliminary ruling. The ECJ decided that the issue was really whether the relevant consumer would interpret the logo device affixed to the toy car as a reference to trade origin and believe that the model car originated from Opel or an economically linked undertaking (C-48/05, 25 January 2007). If so, there could be trade mark infringement. Otherwise, there would not.
Based on this ruling the Regional Court dismissed the claimant's case (LG Nürnberg-Fürth, 4HK O 4480/04). It held that the relevant consumer would regard the logo as part of the model car rather than an indication of its origin. In other words, the consumer would not attribute the logo to Opel in the sense of trade origin, or assume that there was an economic relationship between the toy car manufacturer and Opel.
The Court of Appeal (Oberlandesgericht) Nürnberg) as well as the Bundesgerichtshof upheld this decision. In particular, the Bundesgerichtshof found that the Opel-Blitz affixed to toy cars which were models of the original cars would be seen as a reproduction of a detail of the original car rather than 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 dissimilar so that there was no trade mark infringement based on a likelihood of confusion.
There was moreover no infringement based on unfair advantage of or detriment to the Opel-Blitz trade mark's reputation, as the Court ruled that no unfair advantage had been taken and no detriment had been caused.
This decision is remarkable. Adam Opel GmbH must have felt confident that its registered trade mark covering toys would ensure it the exclusive right to distribute scale models of Opel cars. On the face of it, that was a reasonable assumption and probably one relied on by many other manufacturers of large-scale items like cars, aeroplanes and boats whose creations are copied in the small scale by toy and model manufacturers. Although the decision is logical on the question of trade origin, it nevertheless constitutes a perhaps unexpected limitation on the scope of trade mark rights.
This decision also brings to mind the earlier "Toy Cars" decision of the Bundesgerichtshof ("Spielzaugautos", GRUR 1996, 57) in which the court held that the manufacture of toy cars constituted an infringement of the registered design of the corresponding original car. If it looks to registered design law, therefore, Opel may yet have another string to its bow.