The European Court of Justice held in the Adam Opel case that using the trademark of a car manufacturer (registered on cars and toys) on a car model would constitute trademark infringement. However, given the specific situation of the German model toy market and the public's awareness of trademarks used on car models, the German Federal Supreme Court rejected the infringement claim in the Opel Blitz II case.

In the recent ruling of the DACHSER case (I ZR 86/22), the German Federal Supreme Court had the opportunity to decide whether the case was applicable to the use of service signs and architectural model.

Source | International Intellectual Property Watch

Author Marcel Pemsel

Background of the case

The plaintiff Dachser SE (hereinafter referred to as' Dachser ') is a logistics company with a registered number of goods and services related to logistics and transportation in categories 9, 35, 39, and 42 302008052945 image and no. 302009028020 image are German trademarks that Dachser specifically uses on trucks and warehouses.

Defendant Gebr Faller GmbH mainly engages in model manufacturing and sales of the following truck and warehouse models:

This truck is a model of the actual truck (manufactured by Mercedes Benz) used by Dachser for service. The warehouse model does not replicate the actual warehouse, but it does reproduce the common basic features of all Dachser warehouses. However, the warehouse model still differs from reality in certain aspects, such as the labeling of rolling shutter doors and the location of trademarks on the model.

Dachser believes that the use of its trademark is infringing and has sued Gebr Faller GmbH。 The Cologne District Court supported Dachser's claim. In the appeal, the Cologne High District Court overturned the judgment of the lower court and rejected its claim. Dachser then appealed to the Federal Supreme Court.

Decision of the Federal Supreme Court

The Federal Supreme Court believes that using trademarks on models is not infringing.

No possibility of confusion

The determination of the possibility of confusion was rejected because on the one hand, the model itself lacks similarity, and on the other hand, there is no similarity between the goods and services related to logistics and transportation in categories 9, 35, 39, and 42.

The Federal Supreme Court, referring to its Opel Blitz II ruling, pointed out that even if Dachser's trademark is already registered on model toys, trademark infringement does not apply. In Germany, model manufacturers have been selling real-life vehicle models with original trademarks for decades. Therefore, German consumers believe that the use of "DACHSER" in the dispute model does not indicate the commercial origin of the model, but rather represents a portion of the real-life trucks used by Dachser. Therefore, the defendant's use of the plaintiff's trademark does not affect the source indication function of the trademark.

Legitimate reasons for protecting well-known trademarks

The Federal Supreme Court also issued the German Trademark Law

Article 14 (2) (3) (Translating Article 10 (2) (c) of the EU Trademark Directive into German law) rejects the claim based on well-known trademarks. According to this provision, if a trademark is identical or similar to a well-known trademark in a member state of the European Union, and the use of the trademark without justifiable reasons would unfairly exploit or damage the distinctive features or reputation of the trademark, the trademark owner may prevent the use of the trademark.

The justices of the Federal Supreme Court acknowledge that the defendant's use of the Dachser trademark unfairly exploited its significance and reputation. The depiction of trademarks on the model increases its attractiveness and can become an incentive for collectors to purchase the model.

However, the Supreme Court held that the defendant's use of Dachser's trademark was justified. Copying real-life vehicles as models inevitably involves applying the trademarks used on actual vehicles. If the use of the trademark does not go beyond simply representing the original vehicle, it is not offensive.

This applies not only to cases where the plaintiff owns the 'automotive' trademark (such as Opel Blitz II), but also to trademarks registered for services. Model manufacturers have the legal right to use the trademark, even if it is used for promotional services, such as on the side of trucks.

The Supreme Court applied the above reasoning to the warehouse model, although the model did not replicate the actual building. In principle, the model must be a detailed representation of the original object. The justices mentioned the following situations that do not meet this condition, in which case the trademark owner can successfully challenge the use of their trademark:

This trademark is used for cars that do not imitate real-life vehicles;

The trademark does not appear in the same position as the original car;

The main sponsor's logo has been replaced by the manufacturer's logo on the model in the original racing car.

In this case, the fact that the model did not replicate real-life buildings is not considered decisive, as the relevant public is aware that even buildings of the same company are usually not exactly the same, but have differences, such as due to differences in their location or land size. Importantly, consumers believe that the model represents typical architectural features of Dachser.

After trial, the court found that

This seems to be a case where the relevant public has been accustomed to a specific type of trademark use for decades, so that it can no longer be considered as infringing on the source indication of the trademark. This result is based on the public's understanding of model toys in relevant countries, which means that the results may differ in other EU member states.

At present, the Federal Supreme Court has the opportunity to decide whether the above judgment also applies to 3D trademarks. The Hamburg Regional High Court (case no. 5 U 61/21) held before the Supreme Court's ruling that Volkswagen's 3D German trademark No 30627911 (mainly registered on vehicles and car models), the famous "Bulli" is infringed by various Bullis models.

The lower court held that the relevant public expected at least one license between Volkswagen and the car model manufacturer