Genuine use: the decision of the German Federal Supreme Court (BGH) in the proceedings of Opel / Autec

By Dr Joseph Fesenmair


Adam Opel AG (“Adam Opel”), a motor manufacturer, is the proprietor of a national figurative mark registered in Germany for, inter alia, motor vehicles and toys.

Autec AG (“Autec”) manufactures, inter alia, remote-controlled scale model cars, which it markets under the trade mark ‘Cartronic’. At the beginning of 2004, Adam Opel discovered that a 1:24 remote-controlled scale model of the Opel Astra V8 coupé, bearing the Opel logo on its radiator grille like the original vehicle, was being marketed in Germany. That toy is manufactured by Autec.

The Cartronic trade mark, accompanied by the symbol ®, is clearly visible on the front page of the user instructions accompanying each scale model and also on the front of the remote control transmitter. In addition, the indications ‘AUTEC® AG’ and ‘AUTEC® AG D 90441 Nürnberg’ appear on the back of the user instructions, the latter indication appearing also on a sticker attached to the underside of the remote control transmitter.

Adam Opel sought an order, inter alia, that Autec be prohibited from commercially affixing the Opel logo on scale models of vehicles, from offering them for sale, marketing them, or holding them for such purposes, and from importing or exporting scale models bearing that trade mark.

The German Federal Supreme Court (BGH) handed down its decision in this case (Opel-Blitz II) on 14 January 2010. The court of first instance, the Regional Court Nürnberg-Fürth, had referred this matter to the ECJ for a preliminary ruling which led to the ECJ's decision in Adam Opel/Autec (C-48/05).

The BGH has published a press release concerning this case (press release No. 9/10 of 15 January 2010). As the final court of appeal, the BGH has decided that a car manufacturer cannot rely on its trade mark rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer's trade mark on the relevant space. The BGH found that such use did not affect the main function of the mark (namely to guarantee the origin of the goods or services to consumers).

In this case indicating the original logo on the goods (here: toy cars), did not fulfil any other functions of the trade mark as the relevant consumer would merely regard the logo device affixed on the defendant's model car as an exact copy of the mark that the original car had affixed in exactly the same space. Consequently, the mark would only be seen as a reproduction of a detail of the original car. The court stressed that the relevant consumers would not regard it as a reference to the trade origin of the toy car. 

As with the L’Oréal decision, this case deals with double identity (identical sign and identical goods). The ECJ reiterated in the L’Oréal decision that in such cases of double identity not only the guarantee of quality of the goods and services as well as the guarantee of origin but also the communication, investment and advertisement functions of the trade mark are being protected. In this context the decision of the BGH, laying down that these functions of the trade mark are not affected by the replication and presentation of the original mark in this context, may be seen as rather surprising.