ADAM OPEL

The IPKat is busy digesting the first of today’s two big ECJ trade mark cases.

In Adam Opel, questions on trade mark use and the defences were referred by the German court concerning Autec’s use of the Adam Opel logo on the radiator grills of its faithful scale models of the Opel Astra V8 coupe.

Was this trade mark use prohibited under Art.5(1)(a)?

*Clearly the use was in the course of trade and without the use of the proprietor.
*The use was ‘in relation to goods’ as per Art.5(1)(a) since the mark was registered by Adam Opel for toys and affixed to toys by Autec
*Nevertheless, there could only be infringement where the use harmed the functions of the trade mark, in particular, its essential function
*The German court had explained that the average German consumer was used to the use of trade marks on scale models of cars in order to indicate that they were reduced-scale reproductions of the real car. If this meant that the relevant public did not see the sign on Autec’s car as an indication that the products came from Adam Opel, or an undertaking economically linked with it, this would mean that the use did not affect the essential function of the Opel logo as registered for toys. [IPKat comment – this is a very narrow view of the essential function, and what jeopardises it. It’s limited to indicating origin, rather than distinguishing, and as a result seems to seek confusion, rather than harm to distinguishing power as in Arsenal v Reed CA]
*It was ultimately for the referring court to determine if the functions of a trade mark had been jeopardized, though the ECJ noted that Adam Opel had not alleged an effect on any of the other trade mark functions. [IPKat comment – more explicit acknowledgment than in Arsenal v Reed ECJ that a trade mark has functions other than the origin function]

BMW and referential use

*The scenario in BMW v Deenik, where use on services which were different to the goods for which the mark was registered and yet Art.5(1)(a) infringement was found was limited to situations in which the defendant is using the trade mark to identify the subject-matter of the services. It did not introduce a general referential use rule. [IPKat comment - this is a sensible (if somewhat arbitrary) limitation. The referential use rule had potentially horrible consequences for free speech in parodies etc]
*As a result, there could be no infringement case in relation to Opel’s registration for cars. Autec simply did not sell cars.

Art.5(2)

*It was the ECJ’s duty to provide the national court with all elements that could be useful for judging the case. Here this included Art.5(2).
* It appeared from Davidoff II that Germany had implemented Art.5(2).
*Subject to verification by the German court, it appeared that the mark was well-known in Germany [IPKat comment – this is a matter of fact; the ECJ should NOT be speculating on this]
*Opel had argued that its reputation for motor vehicles would be put in danger if its mark was used on models which were not up to date. However this was an assessment on a factual nature which was for the national court. [IPKat comment – the whole Art.5(2) exercise was an almighty waste of time, bearing in mind that the ECJ was forced to speculate on whether Germany even had Art.5(2) protection and whether the mark was well-known, and then was unprepared to commit on what would constitute one of the types of harms covered by that article.]

Defences

*This was not an Art.6(1)(c) case since affixing the trade mark did not indicate the purpose of the toy cars
*This was not an Art.6(1)(b) case either since the use did not intend to provide an indication as to the characteristic of the scale models, but instead was an element in their faithful reproduction of the original vehicles [IPKat comment – there’s some serious hair-splitting going on here – isn’t the fact that the models reproduce the originals their defining characteristic?]
*The primary purpose of Art.6(1)(b) is to prevent the proprietor of a trade mark from stopping competitiors from using descriptive terms which form part of his trade mark in order to indicate certain characteristics of their products [IPKat comment – hang on a sec…if the primary purpose is to keep free terms which are already descriptive, this doesn’t bode well for comparative advertising which seeks to make a comparison by using the trade mark owner’s trade mark to indicate the characteristics of both the mark owner’s and possibly the defendant’s own products]

IPKat overall assessment: glad to see the back of the Advocate General’s convoluted approach to trade mark use in this case. Not so sure about the analysis of the defences though.