Opinion of the Advocate General — ECLI:EU:C:2006:154
Date: 2006-03-07
Language of the case: German
Based on: Treaty establishing the European Economic Community (1957)
Subject matter: Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: Germany

Summary of the Judgment 1. Approximation of laws – Trade marks – Directive 89/104 – Right of a trade mark proprietor to prevent use by a third party of an identical sign for identical products (Council Directive 89/104, Art. 5(1)(a)) 2. Approximation of laws – Trade marks – Directive 89/104 – Right of a trade mark proprietor to prevent use by a third party of an identical sign for identical products – Use of the trade mark for the purposes of Article 5(1)(a) of the directive – Concept (Council Directive 89/104, Art. 5(1)(a)) 3. Approximation of laws – Trade marks – Directive 89/104 – Well-known trade mark –Extended protection of non-similar goods or services (Article 5(2) of the directive) (Council Directive 89/104, Art. 5(2)) 4. Approximation of laws – Trade marks – Directive 89/104 – Limitation of the effects of the trade mark (Council Directive 89/104, Art. 6(1)(b)) 1. On a proper interpretation of Article 5(1)(a) of First Directive 89/104 on trade marks, where a trade mark is registered both for motor vehicles 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 a use which the proprietor of the trade mark is entitled to prevent if use of that sign affects, or is likely to affect, the functions of the trade mark as a trade mark registered for toys. It is for the national court to determine, by reference to the average consumer of toys in the Member State concerned, whether that is the case in the dispute before it. (see paras 25, 37, operative part 1) 2. Apart from the specific case of use of a trade mark by a third-party provider of services having as subject-matter the products bearing that trade mark, Article 5(1)(a) of First Directive 89/104 on trade marks must be interpreted as covering the use of a sign identical to the trade mark in respect of goods marketed or services supplied by the third party which are identical to those in respect of which the trade mark is registered. Therefore, as regards a trade mark registered both for motor vehicles 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 that make of car does not constitute a use of the sign as a trade mark registered for motor vehicles, for the purposes of Article 5(1)(a) of the directive. (see paras 28, 30) 3. On a proper interpretation of Article 5(2) of First Directive 89/104 on trade marks, 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 a use which the trade mark proprietor 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. Since that is an assessment of a factual nature, it is for the national court, where necessary, to determine whether that is the case in the dispute before it. (see paras 36-37, operative part 1) 4. On a proper interpretation of Article 6(1)(b) of First Directive 89/104 on trade marks, 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. (see para. 45, operative part 2)