Model interpretation of Articles 5(1)(a) and 6(1)(b) of directive issued

In Adam Opel AG v Autec AG, the European Court of Justice (ECJ) has issued a judgment clarifying, among other things, the interpretation of Articles 5(1)(a) and 6(1)(b) of the First Trademarks Directive.

Article 5(1)(a) states that the proprietor of a registered trademark shall be entitled to prevent unauthorized use by third parties of any sign in the course of trade which is identical or similar to the registered mark in relation to goods and services which are identical to those for which the mark is registered.

Article 6(1)(b), on the other hand, limits the effects of a trademark so that a mark owner cannot prohibit a third party from using in the course of trade indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services.

The ECJ's ruling stems from a preliminary reference from the Nürnberg-Fürth Regional Court in Germany.

Car manufacturer, Adam Opel AG, which owns the well-known 'Opel' logo (a circle incorporating a stylized 'Z') brought a suit against Autec AG in a bid to prohibit the latter from affixing the 'Opel' logo on the radiator grille of its remote-controlled scale models of the Opel Astra V8 Coupé car. The logo, accompanied by the registered trademark symbol and Autec's own marks, was also printed on the front page of the user instructions. Adam Opel had registered its logo both for vehicles and toys.

The first question referred to the ECJ was whether, when a trademark is registered both for vehicles and toys, the trademark proprietor can prohibit a third party affixing the identical mark on scale models of the trademark owners products under Article 5(1)(a) of the directive.

The ECJ stated that where a trademark is registered both for motor vehicles - in respect of which it is well known - and for toys, the (i) affixing by a third party without authorization from the trademark proprietor of a sign identical to that trademark on scale models of vehicles bearing that mark, in order faithfully to reproduce those vehicles, and (ii) marketing of those scale models constitute, for the purpose of Article 5(1)(a) of the directive, a use which the proprietor of the trademark is entitled to prevent, if that use affects or is liable to affect the functions of the mark as a trademark registered for toys. Further, pursuant to Article 5(2), use of that sign may take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark as a trademark registered for motor vehicles.

The court found that it was for the national court to determine whether Articles 5(1)(a) and 5(2) applied in this case.

The second question related to whether Autec had a defence allowing it to affix the 'Opel' logo to its scale model cars in terms of this use being an indication of the kind or quality of the model cars within the meaning of Article 6(1)(b) of the directive.

The ECJ's response was as follows:

"Where a trademark is registered ... [among other things] ... in respect of motor vehicles, the affixing by a third party, without the authorization of the proprietor of the trademark, of a sign identical to that mark to scale models of that make of vehicle, in order faithfully to reproduce those vehicles, and the marketing of those scale models, do not constitute use of an indication concerning a characteristic of those scale models, within the meaning of Article 6(1)(b) of the directive."

Christian Levin Nielsen, Zacco Denmark AS, Hellerup