Who: Bayerische Moteren Werke AG (“BMW”) v Technosport London Ltd (“TLL”) and George Agyeton
Where: Intellectual Property Enterprise Court (IPEC), High Court, England & Wales
When: 13 April 2016
Law stated as at: 6 May 2016
What happened:
TLL is a company dealing in the repair and maintenance of cars, mostly BMWs. It uses genuine BMW spare parts however it is not an authorised BMW dealer. TLL had used 3 of BMW’s registered marks;
(1) ‘BMW’ word mark which had been used on a t-shirt worn by the director at TLL’s premises and in the name of its/its director’s twitter account ‘@TechnosportBMW’;
(2) the BMW roundel which had been used inside and outside TLL’s premises on display boards, on a van, on business cards and on TLL’s website; and
(3) the M logo which had been used on TLL’s website.
BMW claimed TLL had infringed its marks by using them in these ways and that TLL had passed off repair services as being associated with, or approved by them.
Use descriptive of the relevant services said Technosport
In defence to this claim, TLL argued firstly (seeking to rely in Article 12 of Council Regulation (EC) 207/2009) that its use of the marks merely conveyed the message to the average consumer that it was a garage specialising in the maintenance and repair of BMW cars thus a message which was descriptive of the goods and services. It secondly argued that BMW had impliedly given its consent for it to use the marks in such ways.
Article 12 prevents a trade mark owner from stopping a party using its mark to indicate the kind, quality, quantity, intended purpose value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service. It further prevents a trade mark owner from stopping a party using its mark where use of the mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.
In relation to the roundel, TLL attempted to rely on evidence from online forums which demonstrated customers knew that it wasn’t an authorised dealer. The court stated this evidence proved nothing with regard to the message conveyed to an unprompted average consumer. The Judge highlighted the lack of primary evidence from actual consumers and went on to find that the average consumer would believe that the roundel would only be displayed by an authorised company, as this would be ‘the almost invariable experience of actual consumers’.
The position was similar in relation to the M logo. The Court found that it was likely that actual consumers, and thus the average consumer, would have seen TLL’s use of the M logo to mean that TLL was an authorised dealer.
Use of BMW word mark did not convey authorised dealer status
With respect to use of the BMW word mark, the court found that this use would not affect any of the functions of the trade mark. It did not convey to the average consumer that TLL was an authorised dealer. The sign was being used as part of an accurate message that services offered by TLL involved particular expertise in relation to BMW vehicles.
BMW further claimed that TLL’s use had taken unfair advantage of their roundel mark and the BMW word mark (relying on article 9(1)(c)). As the Judge had found that use of the roundel did convey to the average consumer that TLL was an authorised dealer, he found that this use took unfair advantage of the repute of the roundel mark and/or the distinctive character of this mark. However in relation to the BMW word mark, the use was not sufficient to show TLL took unfair advantage.
The Judge noted however, that even if he had only found that TLL’s use of these marks conveyed a vague message, such that the average consumer would have been unable to determine whether there was an economic link between TLL and BMW (specifically whether TLL was an authorised car dealer) then he would have found that the use of the marks adversely affected function of marks (relying on the Court of Justice’s decision in Interflora v Marks & Spencer). This comment did not form the basis of his decision and so is not legally binding, but is worth noting for the approach that may be taken in a case on different facts.
Given the findings above, the Judge also found TLL liable for passing off in relation to its use of the roundel and the M logo.
Dealing with the issue of consent, the Judge referred to previous case law which states that to prove consent, TLL would need to present evidence which unequivocally demonstrated that BMW had renounced its right to oppose TLL’s use of the trade marks. This high bar had not been reached on the facts. Further, there was evidence that the director of TLL knew BMW had not consented. Thus, TLL was not able to rely on this ground as a defence.
Why this matters:
This decision is useful guidance for companies who advertise repairing a certain brand, or supply spare parts for a specific brand. These companies should err on the side of caution when using marks other than on the actual spare parts. Further, this case highlights that there are very few instances where an infringer will be able to rely on consent as a defence in absence of evidence of specific consent in the form of a licence or similar.
