No free ticket for toys at the border: BMW successfully defends itself against lawsuit by toy manufacturer (World Trademark Review, 22.01.2020)
- The plaintiff, a toy car manufacturer, ﬁled suit against BMW seeking an injunction and damages following the seizure of goods at the border
- BMW successfully argued that there is no general ‘toy exception’ at the border
- The Munich courts found that third parties cannot exert any prior influence on border seizure applications
Well-known automobile manufacturer BMW has successfully defended itself against a lawsuit by a toy manufacturer seeking an injunction and damages for an allegedly inadmissible seizure of goods at the border. According to the Munich I District Court and the Munich Higher Regional Court, there was no deliberate interference on BMW’s part and third parties cannot exert any prior influence on border seizure requests (decision of the Munich I District Court of 30 July 2018, Docket No 33 O 7422/17; decision of the Munich Higher Regional Court of 5 December 2019, Docket No 29 U 3149/18).
The plaintiff, Autec AG, is a German toy manufacturer which trades in remote-controlled car models under the trademark CARTRONIC. BMW itself manufactures miniature models of its cars, for example under the trademarks BMW, MINI and M.
In November 2016 the Dutch customs authorities refused to import various remote-controlled cars, including toy cars of the BMW Z4 GT3 type of the plaintiff. This followed requests by BMW under Regulation 608/2013 concerning customs enforcement of IP rights. Through such border seizure requests, IP right holders can ask Customs to intercept certain goods at the border before they reach the importer if there is a suspicion of an IP right infringement.
Autec felt affected by this delay at the border and sought an injunction and damages. It referred to the so- called ‘toy case law’, which has been shaped by the Court of Justice of the European Union in the area of trademark law. According to such case law, the production of miniature models does not require, in certain cases, the permission of the car manufacturer.
Autec argued that, by ﬁling its border seizure requests, BMW attempted to undermine the legal situation in an anti-competitive manner and caused Autec problems with its imports. The plaintiff thus wanted BMW to exempt miniature models from its border seizure requests in a general manner. BMW, however, successfully argued that there is no general ‘toy exception’ at the border.
Both courts agreed with BMW that there was no deliberate interference. At the time the application was ﬁled, BMW had no knowledge of the identity of the importer that could be affected or of the design of the goods to be imported. BMW's requests for border seizure were therefore directed, without distinction, against each and every importer of the goods in question. The courts pointed out that BMW, for understandable reasons, made use of a formal European procedure to protect its intellectual property.
When ﬁling the request, BMW adhered to the requirements of Regulation 608/2013, according to which no legal explanation needs to be given upon ﬁling. Customs can intervene as soon as they suspect an infringement and do not have to make any legal considerations, for example with regard to the ‘toy case law’. Accordingly, third parties cannot exert any prior influence on border seizure applications.
Karolina Vogel, KLAKA Rechtsanwälte
World Trademark Review, 22.01.2020: https://www.worldtrademarkreview.com/enforcement-and-litigation/no-free-ticket-toys-border-bmw-successfully-defends-itself-against