All these small Gimmicks – Trademark Infringement?

All these small Gimmicks – Trademark Infringement?

Vacation time. Travelling time. Hamburg. Miniatur Wunderland - the world´s largest model railway. An amazing place to spend a whole day, discovering all the small gimmicks that the Wunderland crew has built and is still continuing to expand. Looking at all the trademarks used, one might wonder if this could be considered trademark infringement. Earlier this year, the German Federal Supreme Court (BGH) had to decide about a similar question and we would like to share the decision.

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(Source:  BGH, I ZR 86/22, Decision of 12 January 2023)

The last time I was at Miniatur Wunderland in Hamburg, I overheard a young boy telling his dad how amazing it was to see all these real-life places, trains, cars, buildings and more. Obviously, he had just discovered a truck with advertisement for a product he knew and he could not wait to find more. His dad responded that he also liked to look out for signs, designations, trademarks, comic figures and the like that he knew, but that he was not sure if Miniatur Wunderland was really allowed to use all these references to real-life designations and landmarks as they might be protected by third party intellectual property. Hearing these words brought to mind that the German Federal Supreme Court (BGH) had just decided about a similar question earlier this year.

BACKGROUND

The court’s decision of 12 January 2023 (see here) concerned use of German Trademark No. 30 2008 055 294

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and German Trademark No. 30 2009 028 020

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both registered since 2008 and 2009, respectively, for goods and services in logistics and transport covering Classes 9, 35, 39 and 42.

The trademark owner had sued a company specializing in scale modeling and in particular in the sale of models of landscapes, buildings and vehicles, including the following truck and warehouse models:

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(Source:  BGH, I ZR 86/22, Decision of 12 January 2023, see here)

The claims were based on an alleged infringement of the abovementioned trademarks being well-known and reputed. The trademark owner won the first instance but lost on appeal. It then took the case to the BGH for review.

DECISION

In accordance with existing case law, the BGH rejected this further appeal and confirmed that use of the registered “DACHSER” marks on model toys was no trademark infringement. It held

• that detailed replicas have been existing in scale model toy construction for decades and that the public was expecting them to be as close to the original as possible;
• that there was a legitimate interest in replicating a vehicle that exists in reality and affixing to it not only the trademark of the manufacturer of the vehicle, but also trademarks that companies use on such vehicles for the purpose of advertising their services;
• that it is no exploitation of the reputation of a well-known service mark "in an unfair manner" if a truck model faithfully reproduced in detail the image of the well-known mark in the same place where it was shown on real-life trucks for advertising purposes;
• that there was no difference in consumer expectation regarding replicas of toy cars and other scale modeling items like buildings;
• that there is a justified interest of toy manufacturers to be able to sell not only vehicles but also buildings as scale models on which well-known trademarks are affixed, insofar as they represent a miniature representation of reality;
• that, depending on the circumstances of the individual case, it may be sufficient for toy buildings if the scale model adopts the design features that are decisive for the corporate identity of a company, including the logo, so that the public recognizes in the model the replica of a building of the trademark owner that typically occurs in reality.

So, overall, no reason for the dad of the young boy mentioned above to worry about trademark infringement by use of replica trucks, trains, buildings and the like.

Are you a fan of Miniatur Wunderland and would like to share your thoughts on the above, let us know. If you are a trademark owner and would like to discuss a possibly infringing use of your trademarks by someone else, you are also welcome to contact us by phone at 089 55 879 870 or by email at

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