BMW has been partly successful in a trademark and passing off claim in the Intellectual Property Enterprise Court (IPEC) against Technosport London Limited (TLL).
TTL is a London based garage specialising in the maintenance and repair of BMW cars. TLL's sole director, Mr Agyeton, had worn a t-shirt bearing the mark 'BMW' whilst carrying out repair and maintenance services. The BMW roundel device was displayed outside TLL's premises, on a company van and on their website and business cards. The 'M' logo (denoting the motorsport division of BMW) was displayed on TLL's website.
BMW relied on their EU trade mark registration no. 000091835 for the mark BMW, EU registration no. 000091884 for the roundel device and International Registration No 1000463 for the M logo. All registrations cover goods and services including "maintenance and repair of cars, motors and engines and parts and fitting of these goods".
It is a defence to trademark infringement that the use of a sign is merely descriptive, or is to indicate the intended purpose of the goods, provided the use of the mark is in accordance with honest practices in industrial or commercial matters.
TLL raised this defence, arguing that the use of the signs was not trademark infringement because the use of the marks would merely show consumers that they were a specialist repairer of BMW's using genuine BMW parts.
Mr Agyeton also claimed that he used the marks with the consent of BMW as it transpired that representatives of BMW had visited TLL's premises and therefore Mr Agyeton assumed that this implied that they consented to use of the marks. In fact, licences to use the marks could only be granted by BMW UK and as no such licence was in place, no consent had been given. BMW had also wrote to TLL in 2006 drawing attention to the fact that Mr Agyeton had not been licensed to use the marks. Mr Agyeton said that he had 'forgotten' about this letter.
Marks and Spencer Plc v Interflora
The earlier case of Marks and Spencer Plc v Interflora Inc [2011 ERC 1-8625] shows that if an advertisement shows an economic link, to the extent that customers are unable to determine whether the party is economically linked, there is trademark infringement.
In the instant case the court held that use of the BMW roundel was trademark infringement and passing off because the use took unfair advantage of the repute of the roundel mark. The use of the roundel sign gave TLL an advantage while trading by conveying the impression that they were more than just a BMW specialist.
The position was similar in relation to the M Logo which may only be used by authorised dealers. TLL were not an authorised dealer and TLL's use of the logo would cause the average consumer to wonder if TLL were.
However, TLL's use of the BMW mark was not found to infringe. The mark was used in conjunction with TLL's trading name 'Technosport'. The court held that the use of the mark did not convey to customers anything other than that TLL traded in the maintenance or repair of BMW cars.
Mr Agyeton was found to be jointly liable with TLL in respect of the trade mark infringements and passing off.in: Case Law, News, Passing Off, Trade Marks