Bayerische Motoren Werke AG v Technosport London Ltd and another  EWHC 797 (IPEC),  All ER (D) 90 (Apr)
The claimant (BMW) manufactured motor vehicles under that mark.
It held three registered trade marks, Community Trade Mark in the form of the letters BMW (the BMW mark), a Community Trade Mark device mark (the roundel); and an International registration of a device mark (the M logo).
The first defendant (TLL) was a company dealing in the repair and maintenance of cars, mostly BMWs.
The second defendant was the sole director and shareholder of TLL.
TLL had used signs identical to BMW’s trade marks in the course of its business.
BMW alleged that the use of the signs was an infringement of the corresponding trade mark, in accordance with art 9(1)(a) and (b) of Council Regulation (EC) 207/2009 and, in the case of the BMW mark and the Roundel, also art 9(1)(c) of the Regulation.
BMW also alleged that TLL’s uses of the signs were likely to lead a substantial proportion of the public or trade to believe that TLL’s service were those of BMW or were associated in the course of trade with BMW, such as to constitute passing off.
- Whether TLL’s use of the signs, in the manner in which they had been used by TLL, had conveyed to the average consumer and a substantial proportion of the relevant public nothing more than that TLL had been a specialist in the repair and maintenance of BMW vehicles, using genuine BMW parts;
- In the case of the BMW mark and the roundel, whether TLL’s use of the corresponding signs without due cause had taken unfair advantage of the distinctive character or repute of the trade marks;
- Whether BMW had consented to TLL’s use of any of the signs in the manner complained of
- Whether the second defendant was jointly liable with TLL for trade mark infringement and passing off, if TLL was found liable.
- Consideration was given to the defence under art 12(b) and (c) of the Regulation.
The court ruled:
- With respect to the roundel, it was likely that the average consumer had come to believe that it would only be displayed on and in the premises of a business which maintained and repaired vehicles if that business had been authorised by BMW because that would have been the almost invariable experience of actual consumers.
- The position was similar in relation to the M logo. It was likely that actual consumers, and thus the average consumer, would have taken TLL’s use of the M logo signs to mean that TLL had been an authorised dealer.
- With respect to the BMW mark, TLL’s use of its BMW signs had not conveyed to the average consumer any implication of TLL being an authorised dealer
- TLL’s use of its roundel signs had taken unfair advantage of the repute of the roundel. In any event, the roundel signs had given TLL an enhanced ability to trade, apparently an advantage which had been something more than being recognised as just a specialist in BMWs. Also, TLL had been using the roundel signs to take unfair advantage of the distinctive character or repute of the roundel mark.
- The position was different with respect to the BMW mark, as it was, by itself, insufficient to show that the use of BMW had taken unfair advantages of the repute or distinctive character of the BMW mark.
- There had been no consent given by BMW to TLL to use the trade marks and no demonstration by BMW, unequivocal or otherwise, that there had been. Further, the second defendant had known that there had been no consent from BMW
- Accordingly, the roundel had been infringed by TLL, pursuant to art 9(1)(a) and (c) of the Regulation, by reason of the pleaded uses of the roundel sign.
- The M logo had been infringed, pursuant to reg 9(1)(a) and (b) of the Regulation, by reason of TLL’s use.
- The BMW mark had not been infringed by TLL.
- TLL had no defence to its infringements, pursuant to art 12(b) or (c) of the Regulation.
- TLL was also liable for passing off in relation to its use of the roundel sign and the M logo sign
- The second defendant was jointly liable with TLL for its acts of infringement of two of the trade marks and for passing off.