Shuffle Board Tmplates

Opel, the ECJ opens a gap in Trademark Law

D na case ADAM OPEL / AUTEC AG, issued January 25, 2007 Court of Justice Europe had to decide between the exclusive rights held by the trademark holder and exceptions limiting the right to benefit from economic actors wishing to indicate the source or characteristics of a property.

Under Article 5 § 1 b) Directive of 21 December 1988 to approximate the laws of the Member States relating to trademarks (89/104/EEC - OJ 1989 L40, p.1) as amended by the Agreement on the European Economic Area of 2 May 1992, "A registered trademark gives its owner an exclusive right. The holder is entitled to prevent all third parties not having his consent from using in the course of trade: a) a sign identical to the mark for goods or services identical to those for which the is registered; b) any sign where, because of its identity or similarity with the mark and because of the identity or similarity of goods or services covered by the mark and the sign, there in the public mind a likelihood of confusion includes the likelihood of association between the sign and the mark . "

However, this exclusive right is tempered by Article 6 § 1 provides that "the right conferred by the mark does not entitle its holder to prohibit others from using, in business life: a) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the product or service delivery or other characteristics thereof.

Sometimes, to indicate the kind, quality, quantity, intended purpose, value, geographical origin (...) or other characteristics, there is no other choice but to mention the name of the trademark on the property concerned. Is it possible to reproduce?

is precisely the question that was subject to interpretation by the ECJ in a case between ADAM OPEL (car manufacturer and owner of the Opel brand, registered Germany 10 April 1990 for cars and toys) and AUTEC AG (manufacturer of radio controlled model car, under the brand CARTONIC). ADAM OPEL having found what was marketed in Germany a model at 1 / 24 R / C ° and the Opel Astra V8 coupe, which was on the calendar displayed the image of the original Opel logo appearing on the vehicle sold by ADAM OPEL. The mark appeared CARTONIC clearly visible on the front page of the instructions that come with each model, as well as on the front of the remote control transmitter.

In Case rich teaching of January 25, 2007 , Court recalls that the use of a sign identical to the trademark in question must not impair the essential function of the exclusive right granted by the mark is " guarantee to consumers the origin of the product . The exclusive right of the holder of the trademark was granted to protect its interests. The ECJ decides that the affixing by a third party without permission of the trademark owner of a sign identical to that mark on the model of the vehicle known brand in order to faithfully reproduce those vehicles to market so-called model does not constitute the use of an indication concerning a characteristic of these models to the meaning of Article 6, § 1, a) of the Directive.

It is therefore possible to consider, as in other factual circumstances in which the original brand would not apply to toys or models, and the model Marketed by one third would be for collectors, the identical reproduction of every detail the original vehicle could possibly be a key feature of this product, so that Article 6 § 1 a) allow the faithful reproduction of the mark. Then the field of copyright (or of the design in case of deposit) attached to the vehicle design itself that the manufacturer could ban the manufacturer model, which would entail removing ownership copyright and originality of design.

is remembered in this connection in French law technicality Copyright and stop Court of Appeal of Paris 1 st June 2005 reversing the ruling February 18, 2004 by the Tribunal de Grande Instance de Paris, which condemned PGO (company located in Alès) to stop producing the "Speedster 1", inspired by the legendary Porsche 356 sixties ( James Dean developed a passion for auto racing while filming Fury of Living bought his first Porsche 356 Speedster before the swap against a 550 on the steering wheel which he had lost his life). Porsche failed to demonstrate transmission rights between the company had released the model and today's society, has seen its share declared inadmissible on the basis of copyright. The Porsche 356 is no longer neither manufactured nor marketed for several decades the Court of Appeal also dismissed the action for unfair competition and parasitism, Porsche binding to repay the damages awarded by the trial court .

Hence the importance of anticipating and systematically ensure traceability copyright, especially in case of transmission ...

© Xavier Cerf - lawyer