## Facts

- Adam Opel AG owned a figurative trade mark of the Opel “lightning” logo registered in Germany for both motor vehicles and toys.
- Autec AG manufactured and sold remote-controlled scale model cars, including models replicating Opel vehicles.
- Autec affixed the Opel logo to the models’ radiator grilles and reproduced the logo in the user manuals.
- The toys were marketed under Autec’s own brand (“Cartronic”) and were sold without Opel’s authorization.
- Opel sued in German court alleging infringement based on registrations covering toys and motor vehicles.
- The national court referred questions to the Court of Justice of the European Union concerning the meaning of Directive 89/104/EEC Articles 5(1)(a), 5(2), and 6(1)(b).

## Issues

1. Whether affixing an identical logo to scale-model cars (goods for which the mark is registered as “toys”) constitutes prohibited “use” under Article 5(1)(a) only if it affects trade mark functions.
2. Whether use of the logo on toy model cars can be treated as use “in relation to” motor vehicles under Article 5(1)(a), given Opel’s registration for motor vehicles.
3. Whether reproduction of the logo to make a faithful replica qualifies as a permitted descriptive “indication concerning a characteristic” under Article 6(1)(b).
4. How the “functions of the trade mark” requirement conditions analysis under Articles 5(1)(a) and (where applicable) 5(2).

## Decision

- The CJEU held that affixing and marketing scale models bearing an identical sign may be prohibited under Article 5(1)(a) only if the use affects, or is likely to affect, the trade mark’s functions as registered for toys; the national court must assess consumer perception in the toy market.
- The CJEU held that, outside specific scenarios involving third-party services relating to trade-marked goods, Article 5(1)(a) covers only use for goods or services identical to those for which the mark is registered; Autec’s conduct was not use “for motor vehicles.”
- The CJEU held that applying the Opel logo to model cars and manuals to replicate the real vehicle does not constitute use of an indication concerning a characteristic of the toys; Article 6(1)(b) did not apply.
- The case was returned to the national court to apply these standards to the facts.

## Legal Principles

- Infringement under Article 5(1)(a) is limited to situations where the challenged use affects or is liable to affect trade mark functions, particularly the essential origin-indicating function.
- For identical-sign/identical-goods claims under Article 5(1)(a), the relevant inquiry is whether consumers are likely to perceive the sign as indicating the commercial origin (or an economic link) of the defendant’s goods.
- Except in limited service-provider situations, Article 5(1)(a) does not extend to uses tied only indirectly to the proprietor’s registered goods; use on toys is not treated as use “in relation to” motor vehicles.
- Faithful replication of a real-world product bearing a trade mark does not, by itself, remove the use from Article 5(1)(a); the analysis remains focused on trade mark functions and consumer perception.
- Article 6(1)(b) does not shelter use of the trade mark itself merely because it identifies the real object being replicated; such use is not an “indication” of characteristics like kind or quality of the defendant’s goods.

## Conclusion

The CJEU ruled that placing a car manufacturer’s logo on toy replicas can fall within trade mark “use” for toys, but is actionable only where it impairs trade mark functions, and it cannot be justified as descriptive use; the court also limited Article 5(1)(a) to use for goods identical to those for which the mark is registered, rejecting reliance on the motor-vehicle registration for conduct involving toys.


Adam Opel AG v. Autec AG, Case C-48/05, 2007 E.T.M.R. 33 (C.J.E.U. 2007)