BMW v Technosport
In a recent UK court decision, BMW successfully claimed trade mark infringement and passing off against an independent car dealer that had used BMW's trade marks to promote its services.
This case examines the circumstances in which a third party, who has no contractual relationship with the brand owner, may use the brand owner's marks.
BMW, the motor vehicle manufacturer, is the owner of numerous well known trade marks including a roundel device incorporating the initials "BMW"; a figurative mark incorporating the letter "M"; and the word mark "BMW".
These trade marks are registered in relation to, amongst other things, car maintenance and repair services.
Technosport London Ltd (TLL) is a vehicle repair and maintenance company specialising in BMW cars. It is not, however, part of BMW's authorised network of garages.
TLL had displayed the roundel device at its premises, on their van and on business cards, and had used the M logo on its website.
In addition, TLL owned a Twitter account with the name "@TechnosportBMW", and the sole director of TLL, Mr Agyeton, had worn a shirt bearing the BMW word mark.
Intellectual Property Enterprise Court
BMW claimed before the Intellectual Property Enterprise Court (IPEC) that TLL's use of the signs amounted to both trade mark infringement and passing off. The court addressed:
- Whether the message conveyed by TLL's use of the signs went further than merely conveying that TLL was a specialist in the repair and maintenance of BMW cars using genuine BMW spare parts.
- Whether TLL's use of the roundel device and BMW word mark took unfair advantage of the distinctive character or repute of the marks without due cause.
Message conveyed by use of signs
There are two types of dealer who specialise in the repair and maintenance of BMW cars:
- authorised dealers who have a formal licence to use BMW's trade marks; and
- independent dealers, such as TLL, who do not have such a relationship.
TLL argued that the use of the signs conveyed to the average consumer nothing more than that TLL was a specialist in the repair and maintenance of BMW cars using genuine BMW spare parts. BMW submitted that use of the roundel device and M logo was only lawful by authorised dealers, and that the average consumer had been educated to make this connection.
BMW acknowledged that there were circumstances in which a third party could use its marks without a licence. For example, TLL did not infringe BMW's word mark by advertising itself as "The BMW Specialists" on the front of its premises, as this merely indicated that TLL had particular expertise in relation to services for BMW cars, and did not affect the function of the BMW word mark. BMW asserted, however, that use of the roundel device and M logo could only be made under express licence which TLL did not have. TLL, on the other hand, sought to apply the same reasoning to its use of all BMW's signs: ie, that they merely denoted the nature of the repair services being supplied, using genuine parts.
Interflora Inc v Marks & Spencer plc
BMW referred to Interflora Inc v Marks & Spencer plc, in which the Court of Justice held that Marks & Spencer's use of Interflora's trade mark as a keyword and the resulting advertisement suggested that there was an economic link between Marks & Spencer and Interflora, and had therefore adversely affected the mark's function of indicating origin. It was argued that an analogy could be drawn between the average consumer's perception of an economic link in Interflora and the message conveyed to the average consumer by TLL's use of BMW's marks.
The court accepted this analogy and found that it was likely that the average consumer would believe that the roundel device and M logo would only be displayed on and in premises of an undertaking that repairs and maintains cars if that undertaking was an authorised dealer, as "this will have been the almost invariable experience of actual consumers". Furthermore, even if the average consumer was unable to determine whether TLL was an authorised dealer, TLL's use of the signs would at the least have caused the consumer to contemplate whether this was the case, thus adversely affecting the origin function of BMW's marks.
In relation to the use of the BMW word mark in TLL's twitter name "@TechnosportBMW" and on Mr Agyeton's shirt, on the other hand, the court found that BMW had not produced sufficient evidence to show that such use implied to the average consumer that TLL was an authorised dealer.
The court went on to consider whether TLL's use of the roundel device and BMW word mark took unfair advantage of the distinctive character or repute of the marks without due cause. The reputation of the roundel device and BMW word mark was not disputed. TLL also accepted that should it be found that unfair advantage had been taken of the distinctive character or repute of the marks, there would have been no due cause for doing so.
Enterprise Holding Inc v Europcar Group UK Ltd
Mr Agyeton submitted that he had used the roundel device because it was good for business, but maintained that he was not representing TLL as an authorised dealer of BMW. Citing Enterprise Holding Inc v Europcar Group UK Ltd, the court stated that it was concerned with the objective effect of the use of the mark, not the user's subjective intention. It was held that TLL's use of the roundel device therefore took unfair advantage of the distinctive character or repute of the mark.
Again, however, this finding did not extend to the use of the BMW word mark, as such use did not convey to the average consumer anything more than that TLL was a specialist in the repair and maintenance of BMW cars, and was not infringing.
The success of the passing off claim relied on a finding of infringement of the marks. Thus it was found that TLL was liable for passing off in relation to its use of the roundel device and the M logo, but not in relation to the BMW word mark.
The case highlights that while there will be circumstances in which unauthorised dealers may make use of trade marks in relation to genuine spare parts, brand owners may object to use of their marks which goes further than merely describing the services offered and implies a relationship with the brand owner.
Interestingly, the court in this case was prepared to allow use of the BMW word mark in a Twitter name ("@TechnosportBMW"), on the basis that it merely described the nature of the goods and services being supplied. The court appears to be more accepting of use of word marks rather than logos.
Case details at a glance
Jurisdiction: England and Wales
Decision level: IPEC
Parties: Bayerische Motoren Werke AG v Technosport London Ltd & Anor
Citation:  EWHC 797
Date: 13 April 2016
Full decision: http://dycip.com/2016ewhc797
Related case details at a glance
Jurisdiction: European Union
Decision level: Court of Justice
Parties: Interflora Inc v Marks & Spencer plc
Citation: Case C?323/09
Date: 24 March 2011
Full decision: http://dycip.com/c-32309
Jurisdiction: England and Wales
Decision level: High Court
Parties: Enterprise Holding Inc v Europcar Group UK Ltd & Anor
Citation:  EWHC 17
Date: 13 January 2015
Full decision: http://dycip.com/1Df0qGG