Who: BMW and Shaun Coley (trading as BMW Mini Gearbox Centre)
Where: The Intellectual Property Enterprise Court (IPEC)
When: July 2014
Law stated as at: 8 August 2014
What happened:
Mr Coley, trading under the business names ‘BMW Mini Gearbox Centre’ and ‘Mini One Cooper Gearbox’, used his domain www.minigearbox.co.uk and garage to sell reconditioned gearboxes for various models of BMW’s well known Mini car series. However, Mr Coley’s use of several of BMW’s trade marks on the site in various advertising and descriptive statements, had been found in earlier court proceedings to amount to trade mark infringement and passing off. In the earlier proceedings BMW successfully obtained an injunction against Mr Coley, preventing his infringement of their trade marks and passing off. Following Mr Coley’s continued use of BMW’s trade marks, BMW pursued a declaration, in the most recent court proceedings, that Mr Coley’s subsequent actions amounted to a breach of the earlier injunction.
BMW issued proceedings in the IPEC, which offers a substantially cheaper and more streamlined route for litigation than other courts in the jurisdiction. In the most recent proceedings, BMW relied on its MINI trade mark and associated goodwill in that trade mark for its claim in passing off, arguing that:
- the goodwill that BMW had in the sale of cars and car parts had been used by Mr Coley in his business;
- the use, by Mr Coley, of ‘www.minigearbox.co.uk’ was an instrument of fraud;
- average consumers would believe Mr Coley’s business to be linked to BMW or to be part of BMW’s business;
- Mr Coley was taking unfair advantage of the MINI trade mark;
- Mr Coley’s use of the MINI trade mark was detrimental to the trade mark’s distinctive character and reputation; and
- Mr Coley’s use of the trade mark was without due cause.
The issue before the court was encapsulated by a single question: ‘Would the average consumer, looking at Mr Coley’s website and seeing the MINI signs, think that the website was an official BMW website, or that the business was linked to BMW?’ The court decided that, on balance, there was a genuine risk that the consumer would perceive Mr Coley’s website to be an official part of BMW’s business or linked to it. The court granted the declaration.
Why this matters:
This is a reminder that Companies need to be extremely cautious when using another company’s trade mark in a descriptive way in adverts, on websites and in product descriptions. If the use of a trade mark is such that the average consumer could believe that the company’s website, goods, or services are part of the trade mark owner’s business, or are linked to that business, then there is a risk that the company could be deemed to be infringing those trade marks, or be found guilty of passing off. Where a company wants, or needs, to use another company’s trade mark for descriptive purposes, they should take all reasonable steps to ensure that it is clear to consumers that there is no link between their business and that of the trade mark owner.
It is also important to note the Judge’s comments in this case, in particular he highlighted how simply the wording on the website could have been re-ordered by first stating that the trading company was an independent company before going on to refer to ‘Mini One Cooper Gearbox’ and thereby avoiding any confusion on behalf of consumers. In doing so, Mr Coley could have mitigated his liability in respect of trade mark infringement and passing off. This case also highlights the advantages of the IPEC, not only in terms of the cost and time efficiencies, but also for the clarity and commercial nature of the judgements it can deliver.
