Hitting the brakes on trademark infringement
The recent decision by the Court of Appeal in BMW v Technosport London Limited provides more guidance as to when a third party’s trade mark can be used to advertise your own services.
What was the background?
BMW owns, among other things, the following registered trade marks:
- The word mark “BMW”
- The “BMW Roundel”:
- The “BMW M Logo”:
Technosport London Ltd is a company that provides car repair and maintenance services, specialising in BMWs and Minis.
BMW issued trade mark proceedings against Technosport because Technosport had used all three of the above BMW-registered trade marks in various aspects of its business in the following ways:
- The “BMW Roundel” on a facia board on the exterior of its former business premises, on a banner in the interior of its new business premises, on the outside of its commercial vans and on business cards distributed to customers;
- The “BMW M Logo” on its website;
- The BMW word mark on its company shirts (as part of the sign “TECHNOSPORT BMW”), on its twitter account (as part of the twitter handle “@TechnosportBMW”) and on the back of its commercial vans (as part of the sign TECHNOSPORT-BMW).
What happened at the first trial?
Judge Hacon, sitting in the Intellectual Property Enterprise Court, found that Technosport’s use of the BMW “Roundel” and the BMR “M Logo” lead the average consumer to believe that Technosport was a BMW authorised dealer (which it wasn’t). Technosport were accordingly found to have infringed those two trade marks.
However, Judge Hacon said that Technosport’s use of the BMW word trade mark did not amount to trade mark infringement.
The Court of Appeal decision
The Court recognised that there were situations where a third party’s trade mark could be used in the advertising of another business, particularly in the car repair/spare parts industry (where it was very often necessary to use a manufacturer’s trade mark in order to explain to the public which cars you specialised in repairing/servicing). However, such use fell broadly into two categories:
- “Informative Use” (for instance, saying “my business provides a service which repairs BMWs and/or uses genuine BMW spare parts”). This sort of use would not amount to trade mark infringement, despite the BMW trade mark appearing in the advertisement;
- “Misleading Use” (for instance, use of a trade mark which suggests that “my repairing service is commercially connected with BMW”). This would go over-and-above informative use, and would most probably amount to trade mark infringement.
The Court of Appeal (Floyd, LJ giving the main judgment) disagreed with Judge Hacon and held that Technosport’s use of the BMW word trade mark did in fact amount to trade mark infringement. This was because there remained a real risk that the average consumer would take Technosport’s use of the BMW word mark to indicate that there was a commercial connection between their business and BMW. This was primarily because the Court considered that Technosport’s use of the sign TECHNOSPORT-BMW went beyond “informative” use.
Accordingly, the Court of Appeal found that Technosport had infringed BMW’s word trade mark (“BMW”) under article 9(1)(b) of the EU Trade Mark Regulation.
This result provides further clarity to the 1999 decision in Bayerische Motorenwerke AG and another v Deenik (in which it was held that an independent car mechanic’s use of the advertising sign “Repairs and Maintenance of BMWs” did not infringe the BMW word trade mark. It is now clear that if independent mechanics and spare parts services want to use a car manufacturer’s logo in their advertising, then they should not go beyond mere “informative” use of that logo, or risk straying into trade mark infringement.
For more information, please contact Felix Dodd