Adam Opel AG v Autec AG.
Date: 2007-01-25
16. Under the first sentence of Article 5(1) of the directive, the registered trade mark confers exclusive rights on its proprietor. Under Article 5(1)(a), that exclusive right entitles the proprietor to prevent all third parties, acting without his consent, from using in the course of trade any sign which is identical to the trade mark in relation to goods or services which are identical to those for which the trade mark is registered. Article 5(3) gives a non-exhaustive list of the kinds of use which the proprietor may prohibit under Article 5(1). Other provisions of the directive, such as Article 6, define certain limitations on the effects of a trade mark (Case C‑206/01 Arsenal Football Club  [2002] ECR I‑10273, paragraph 38).
17. In order to prevent the protection afforded to the proprietor varying from one State to another, the Court must therefore give a uniform interpretation to Article 5(1) of the directive, in particular the term ‘use’ which appears there ( Arsenal Football Club , paragraph 45).
18. In the main proceedings, it is undisputed that the use of the sign identical to the mark is indeed use in the course of trade, since it takes place in the context of commercial activity with a view to economic advantage and not as a private matter (see, to that effect, Arsenal Football Club , paragraph 40).
20. In so far as the Opel logo has been registered for toys, this is moreover the case envisaged in Article 5(1)(a) of the directive, namely that of a sign identical to the trade mark in question in relation to goods – toys – which are identical to those for which the trade mark was registered. In that regard, it should be noted in particular that the use at issue in the main proceedings is made ‘in relation to goods’ within the meaning of Article 5(1)(a) of the directive since it concerns the affixing of a sign identical to the trade mark onto goods and the offering of the goods, putting them on the market or stocking them for those purposes within the meaning of Article 5(3)(a) and (b) of the directive (see, to that effect, Arsenal Football Club , paragraphs 40 and 41).
21. It should, however, be remembered that, in accordance with the case-law of the Court of Justice, the exclusive right under Article 5(1) of the directive was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions and that, therefore, the exercise of that right must be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods ( Arsenal Football Club , paragraph 51; Case C‑245/02 Anheuser‑Busch  [2004] ECR I‑10989, paragraph 59).
22. Therefore, the affixing by a third party of a sign identical to a trade mark registered for toys to scale models of vehicles cannot be prohibited under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of that trade mark.
27. In that respect, it is true that BMW  concerned the use of a sign identical to the trade mark for services which were not identical to those for which that trade mark was registered, since the BMW trade mark, at issue in the main proceedings, was registered for vehicles but not for vehicle repair services. However, the vehicles marketed under the BMW trade mark by the proprietor of that mark constituted the subject-matter of the services – the repairing of vehicles – supplied by the third party, so that it was essential to identify the origin of the BMW cars, the subject-matter of those services. It was having regard to that specific and indissociable link between the products bearing the trade mark and the services provided by the third party that the Court of Justice held that, in the specific circumstances of the BMW case, use by the third party of the sign identical to the trade mark in respect of goods marketed not by the third party but by the holder of the trade mark fell within Article 5(1)(a) of the directive.
28. Apart from that 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 the directive 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.
29. First of all, the interpretation whereby the goods or services referred to in Article 5(1)(a) of the directive are those marketed or supplied by the third party follows from the wording of that provision itself, particularly the words ‘using … in relation to goods or services’. Secondly, the contrary interpretation could lead to the words ‘goods’ and ‘services’ used in Article 5(1)(a) of the directive designating goods or services of the trade mark proprietor, whereas the words ‘goods’ and ‘service’ appearing in Article 6(1)(b) and (c) of the directive necessarily refer to those marketed or supplied by the third party, thereby leading, contrary to the scheme of the directive, to interpreting the same words in a different way according to whether they appear in Article 5 or in Article 6.
31. According to consistent case-law, it is for the Court to provide the national court with all those elements for the interpretation of Community law which may be of assistance in adjudicating on the case pending before it, whether or not that court has specifically referred to them in its questions (Case C‑456/02 Trojani  [2004] ECR I‑7573, paragraph 38; Case C‑258/04 Ioannidis  [2005] ECR I‑8275, paragraph 20).
33. Unlike Article 5(1) of the directive, Article 5(2) does not require Member States to provide in their national law for the protection to which it refers, but merely permits them to provide such protection (Case C‑292/00 Davidoff  [2003] ECR I‑389, paragraph 18). However, subject to verification by the referring court, the questions submitted by the Bundesgerichtshof (Germany) and examined by the Court in Davidoff  seem to imply that the German legislature has implemented the provisions of Article 5(2) of the directive.
42. In that regard, whilst this provision is primarily designed to prevent the proprietor of a trade mark from prohibiting competitors from using one or more descriptive terms forming part of his trade mark in order to indicate certain characteristics of their products (see, for example, Joined Cases C‑108/97 and C‑109/97 Windsurfing Chiemsee  [1999] ECR I‑2779, paragraph 28), its wording is in no way specific to such a situation.
43. One cannot therefore exclude a priori the possibility that that provision might authorise a third party to use a trade mark if such use consists in giving an indication concerning the kind, quality or other characteristics of products marketed by that third party, provided that use is made in accordance with honest practices in industrial or commercial matters.
44. However, the affixing of a sign which is identical to a trade mark registered, inter alia, in respect of motor vehicles to scale models of that make of vehicle in order to reproduce those vehicles faithfully is not intended to provide an indication as to a characteristic of those scale models, but is merely an element in the faithful reproduction of the original vehicles.