The Court of Appeal has issued a significant decision that the use of BMW's registered trade marks by an independent garage on its staff shirts, van and Twitter handle was trade mark infringement and passing off. Each type of use created the impression that the garage's BMW repairing service was affiliated to BMW's network, or that there was a special relationship between them.
The Court drew a key distinction between misleading use and merely informative use. Acceptable use would have been, for example, "The BMW specialists" or any use which conveyed the message "my business provides a service which repairs BMWs and/or uses genuine BMW spare parts". However, any message to the effect of "my repairing service is commercially connected with BMW" would amount to a false one.
Brand owners faced with the all too common problem of independent dealers using their marks in a way which suggests a commercial connection or affiliation will greatly welcome this decision. In each case, however, it will be necessary to consider the detail and the context of the use that is being made of the brand.
Usefully, the Court also confirmed that BMW did not have to produce evidence establishing that the juxtaposition of its brand with a dealer's name conveyed the impression that the dealer was authorised, nor did it have to rely upon evidence from actual consumers.
Technosport London Limited (TLL) is an independent garage specialising in the repair and maintenance of BMW and Mini cars. It has no formal connection with BMW.
BMW complained about TLL's use of various trade marks, including for the word "BMW", the BMW roundel logo and its "M" logo.
The trial judge held that TLL's use of the BMW roundel and "M" logo infringed the trade marks protecting them. However, he also concluded that TTL had not infringed the trade mark "BMW" by combining it with "Technosport" in the following ways:
- "Technosport BMW" appearing on staff shirts;
- The Twitter handle - "@Technosport BMW"; and
- Vans with "Technosport - BMW" painted on the back.
The trial judge said that these uses did not suggest to the average consumer that TTL was an authorised BMW dealer, and agreed with TTL's argument that it was using "BMW" merely to convey accurately the message that it specialised in the maintenance and repair of BMW cars. BMW appealed this aspect of the decision.
The Court of Appeal held that TTL's uses of "BMW" did create a likelihood of confusion. It referred to the Court of Justice of the European Union's decision in BMW v Deenik, which had considered whether there was infringement of a BMW trade mark in adverts such as "Repairs and Maintenance of BMWs". That case had decided that, whilst a mark could be used to inform the public that, e.g., someone is a specialist in the sale or repair of such goods, it could not be used in such a way as to create the impression that there is a commercial connection and, in particular, that the reseller's business is affiliated to the trade mark owner's distribution network, or that there is a special relationship between them.
The trial judge had made an error of principle in focusing on the absence of evidence, including evidence from actual consumers, given that the products here were ordinary consumer products where the court is not normally assisted by evidence from individual consumers. The trial judge had 'lost sight' of the need to consider each of the uses in context (including, for example, the use of the BMW roundel on the back of the van and on the shirts). If he had done so, the Court of Appeal said, he would inevitably have found TLL's use carried the risk it was misleading.
Even aside from the context of the use made, the Court of Appeal decided as follows:
- The van: "TECHNOSPORT-BMW" was not informative use. The average consumer would naturally, without further explanation, take the simple juxtaposition of "BMW" with the trading name as an identifier of the business and services it provides. Further, it naturally carried the risk that it would convey the impression of a connection between TLL and BMW going beyond the fact that BMW cars and spares are used in the business.
- The shirts: even if one disregarded the use of the BMW roundel, there was no immediate context to indicate that the presence of the word "BMW" was mere informative use. It was simply a trading style which conveyed the impression of authorisation by BMW.
- The Twitter handle: this was also use within a trading name which was prone to give the impression of authorisation.
The Court did not have to consider BMW's further argument that its "BMW" mark had a reputation and TLL's use had taken unfair advantage, without due cause. The Court noted, however, that this raised difficult questions, which would have to be determined in another case, of whether purely informative use can nevertheless take undue advantage of a well-known trade mark.
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