BMW v Technosport: trade mark use for repair services
A recent Court of Appeal judgment has confirmed that use of a trade mark alongside another trading name could well result in consumers assuming a commercial link between the two.
Technosport is a vehicle repair specialist, dealing mostly with BMWs and Minis. It has no official connection with BMW, other than as a purchaser/user of BMW parts.
BMW claimed trade mark infringement relating to three European Union trade marks (EUTMs) (BMW word mark; the BMW roundel logo; and the Motorsport M logo). The logos had all been used on signage, on a van, on business cards, and on Technosport’s website.
At first instance, the court had held that the average consumer would believe that the roundel and M logos would only be displayed by businesses which were authorised by BMW. Such use would therefore lead consumers to believe that Technosport was an authorised dealer and constituted an infringement (not contested on appeal).
BMW also complained that the word mark had been used alongside Technosport on clothing, directly underneath the word TECHNOSPORT, or alongside it on a single line; in the Twitter handle “@technosportBMW”; and on the rear of a van, also in a single line.
Technosport had argued that its use of the word mark merely accurately conveyed the message that it was a garage specialising in the maintenance/repair of BMW cars. The same defence had been rejected in relation to the logo marks, and BMW argued that it should also be rejected in relation to the word mark. Authorised dealers tended to style themselves by using a trading name immediately followed by “BMW” (eg, “Stephen James BMW”. The first instance judge had held such arguments to be “flimsy”, noting that it would probably only be supported by evidence from actual consumers (which had not been adduced).
BMW appealed this point, arguing that consumers would perceive the Technosport BMW sign as a trading name that did not merely describe what the company did. The company could accurately describe its services in other ways which did not suggest an economic link, and the judge had been wrong to require further evidence. Otherwise, any independent repairer could incorporate the BMW mark into its trading name without objection.
The decision of the Court of Justice of the European Union (CJEU) in Bayerische Motorenwerke AG and another v Deenik (C-63/97) had held that a trade mark owner may not object to third parties using its mark to inform consumers that they carry out repair/maintenance of goods covered by the mark and sold with the owner’s consent, unless such use may create the impression that there is a commercial connection between the parties.
BMW claimed that the immediate juxtaposition of the Technosport and BMW marks meant that consumers may assume the businesses were commercially connected.
The Court of Appeal held that the trial judge had been wrong to require BMW to adduce evidence that such juxtaposition would convey the impression that the dealer is authorised. The judge merely had to assess whether use of the sign “Technosport BMW” could or did convey that impression, and he could make that assessment himself.
Use on the van consisted of the words “Technosport – BMW” above the roundel logo, a telephone number and a website address. Technosport had tried to argue that a strict “mark for sign” comparison should be undertaken, ignoring the presence of the roundel. However, the Court of Appeal followed Specsavers International Healthcare Ltd v Asda Stores Ltd  EWCA Civ 24, noting that an allegedly infringing sign “is not to be considered stripped of its context”.
Nevertheless, even without the logo the court held that there was an obvious risk that consumers would interpret the trading style “Technosport BMW” to indicate a commercial connection with BMW. There was nothing in the sign to indicate that it was being used purely informatively, which could have been achieved by Technosport’s using a phrase such as “BMW repair specialist” in a manner visually distinct from the name Technosport.
The risk of consumers inferring a commercial connection did not depend on it being the universal practice of authorised distributors to use that naming convention, although many did. Rather, the risk exists because consumers naturally interpret use of a mark within a trading name in such a manner, and without further explanation, as being an identifier of the business and the service it provides. It therefore naturally carries the risk that it will convey the impression of a formal connection with BMW. The same applied to use of the mark on shirts and on Twitter.
The use of registered IP rights by spare parts manufacturers and those offering repair/maintenance services is a common occurrence, particularly within the lucrative automotive industry.
This decision will be welcomed by brand owners, as it confirms that not all trade mark use by entities offering such services is lawful. If there is any risk that consumers could infer a commercial connection between an unauthorised dealer and a trade mark owner through the former’s use of the latter’s mark, such use can be prevented.
Case details at a glance
Jurisdiction: England & Wales
Decision level: Court of Appeal (Civil Division)
Parties: Bayerische Motoren Werke Aktiengesellschaft v Technosport London Ltd and George Agyeton
Date: 21 June 2017
Citation:  EWCA Civ 779