# C_2007056EN.01000401.xml

| 10.3.2007 | EN | Official Journal of the European Union | C 56/4 |
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10.3.2007

EN

Official Journal of the European Union

C 56/4

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Judgment of the Court (First Chamber) of 25 January 2007 (reference for a preliminary ruling from the Landgericht Nürnberg-Fürth) — Adam Opel AG v Autec AG

(Case C-48/05) (1)

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(Reference for a preliminary ruling - Trade Marks - Article 5(1)(a) and (2), and Article 6(1)(b) of the First Directive 89/104/EEC - Right of a trade mark proprietor to prevent use by a third party of a sign identical or similar to the trade mark - Trade mark registered for motor vehicles and for toys - Reproduction of the trade mark by a third party on scale models of that make of vehicle)

(2007/C 56/06)

Language of the case: German

Referring court

Landgericht Nürnberg-Fürth, Germany

Parties to the main proceedings

Applicant: Adam Opel AG

Applicant:

Defendant: Autec AG

Defendant:

Re:

Reference for a preliminary ruling — Landgericht Nürnberg-Fürth (Germany) — Interpretation of Article 5(1)(a) and Article 6(1)(b) of Directive No 89/104/EEC: First Directive of the Council to approximate the laws of the Member States relating to trade marks (OJ L 40, p. 1) — Right of the proprietor of a trademark to oppose its use by a third person — Reproduction of the logo of a motor vehicle manufacturer on toy cars

Operative part of the judgment

| 1) | Where a trade mark is registered both for motor vehicles — in respect of which it is well known — and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models:






  — | constitute, for the purposes of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys; |
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1)

Where a trade mark is registered both for motor vehicles — in respect of which it is well known — and for toys, the affixing by a third party, without authorisation from the trade mark proprietor, of a sign identical to that trade mark on scale models of vehicles bearing that trade mark, in order faithfully to reproduce those vehicles, and the marketing of those scale models:

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constitute, for the purposes of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, a use which the proprietor of the trade mark is entitled to prevent if that use affects or is liable to affect the functions of the trade mark as a trade mark registered for toys;

| — | constitute, within the meaning of Article 5(2) of that directive, a use which the proprietor of the trade mark is entitled to prevent — where the protection defined in that provision has been introduced into national law — if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles. |
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constitute, within the meaning of Article 5(2) of that directive, a use which the proprietor of the trade mark is entitled to prevent — where the protection defined in that provision has been introduced into national law — if, without due cause, use of that sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark as a trade mark registered for motor vehicles.

| 2) | Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, 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 Directive 89/104. |
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2)

Where a trade mark is registered, inter alia, in respect of motor vehicles, the affixing by a third party, without the authorisation of the proprietor of the trade mark, 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 Directive 89/104.

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(1)  OJ C 82, 2.4.2005.

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