Date: 25 January 2023
In the judgement of the First Civil Senate of 12.1.2023, the Federal Supreme Court clarified the question of whether miniature replicas of vehicles or buildings infringe the rights of the trade mark owner.
It was clarified that due to the decades-long custom of detailed and realistic replicas in model toy construction, there is a legitimate interest in selling vehicles and buildings on which well-known trademarks are affixed, insofar as they represent a miniature representation of reality.
The defendant specialises in the manufacture of products in the field of model making and in particular sells models of landscapes, buildings and vehicles. The plaintiff considers the use of the sign "DACHSER" on the defendant's models, for example in the form of a truck with the lettering "DACHSER Logistics" and a characteristic warehouse with DACHSER lettering, to be an infringement of its trade marks. It asserted claims for injunctive relief, provision of information, invoicing and a declaration of liability for damages. The Regional Court of Cologne granted the claim in part, while the Court of Appeal dismissed the claim in its entirety.
The BGH, as a court of appeal, ruled that the plaintiff was not entitled to any claims against the defendant because of the distribution of the truck model, neither on the basis of trade mark law nor on the basis of competition law.
As the Court of Appeal had already assumed, the Federal Supreme Court confirmed that a consumer interested in model toy vehicles would recognise that it was a replica and that the plaintiff's trademark represented a detail from reality which was replicated in the model.
For an infringement to occur, there would have to be an exploitation or detriment to the reputation of the trade mark in an unfair manner through the use of the sign.
According to the Federal Court of Justice, although there is an exploitation of the reputation of the trade mark, an unfair exploitation of the trade mark is only given if there is an attempt to use the reputation of the trade mark with a reputation for advertising purposes in another way beyond a mere true-to-life depiction. In this case, there was no promotional use of the reputation of the trade mark that did not go beyond a detailed representation of reality. Even if the company's warehouses are not all built identically, what is present here is a miniature representation of reality, which is recognised by the consumer on the basis of characteristic design features of the company's buildings. Any connection with the trade mark results solely from the toy-like miniature replica of the original. There is therefore no unfair exploitation of reputation.
In addition, the BGH clarifies that it does not matter whether the trade mark is protected for goods or services.
With this judgement, the BGH follows the case law of the ECJ, which decided in the case Adam Opel AG/Autec AG that the affixing of a logo on scaled-down models of vehicles by a third party does not necessarily constitute a prohibited use. A referral to the ECJ is thus not necessary.
This means that the toy and model making industry now has clarity regarding the use of well-known trademarks on realistic models.
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