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IP Cases & Commentary – Details

05 November 2012

Community Registered Designs for Spare Parts - Bayerische Motoren Werke AG v Round and Metal Ltd and Philip David Gross

Ian Starr

Community Registered  Designs for Spare Parts - Bayerische Motoren Werke AG v Round and Metal Ltd and Philip David Gross

When the Community Designs Regulation was being debated, one of the more contentious issues was what rights (if any) should be given to spare parts for, in particular but not exclusively, vehicles. The compromise reached was that, in a transitional period, no protection would exist for “a component part of a complex product used… for the purpose of the repair of the complex product so as to restore its original appearance” (Article 110 of Regulation 6/2002/EC).

Whilst debate has continued to rage about the scope of protection for spare parts and various proposals have been put forward by the EU Commission, the position remains as set out in Article 110.

BMW had registered a number of Community Registered Designs for alloy wheels as shown:

The Defendants were selling similar-looking alloy wheels to ‘upgrade’ the standard wheels supplied on BMW and MINI cars, and were arguing that the Registered Designs of BMW could not be enforced against them by virtue of Article 110.

Following an exhaustive analysis of the legislative history, the Court had no difficulty in finding in favour of BMW holding that Article 110 only applies to:

 

  • Parts such as body panels and not to alloy wheels - as different designs of wheels are perfectly realistic options for a car owner to put on a car and thus they are not part of the ‘original appearance’ of the car.
  • What is needed to repair a complex product not to upgrade it (ie, by adding sporty or wider wheels). In this case, the defendants were not selling replicas of factory standard wheels but upgraded and larger wheels (albeit similar to ones that BMW also supplied as upgrades).

 

The defendants were also found to have infringed BMW’s trade marks by the supply of ‘BMW’ stickers (for attaching to the wheels). as, even though the original purchasers of the wheels would know that BMW had not supplied the wheels, subsequent purchasers of the car would likely assume that the wheels originated from BMW.

Infringement was also found in marketing material where the words used were “18” BMW parallel wheels” (to describe the defendants’ products).

Wording such as ‘BMW style’ or ‘MINI mesh style’ were accepted as non-infringing.

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