20 July 2017
In June 2017 the Court of Appeal decided in favour of BMW in an appeal from the Intellectual Property Enterprise Court “IPEC”, regarding alleged infringement of three of BMW’s trade marks by Technosport.
Technosport is a garage in London which specialises in BMW repairs and maintenance, although there is no formal connection between the garage and the famous car manufacturer. Technosport was accused of infringing trade marks including “BMW” and also BMW’s iconic roundel symbol, by displaying the marks on the exterior and interior of its business premises, on business cards and on its website. Technosport was also accused of using the trade marks on social media, on t-shirts and on the rear of its van, although these uses were all in close conjunction with the word “TECHNOSPORT”.
The IPEC judge decided that use of the trade marks on their own, i.e. on the premises, business cards and the website, indicated to consumers that Technosport was formally linked to BMW, which misled consumers and was an infringement of their trade marks. However, the court separately decided that use of the trade marks in conjunction with Technosport’s own name was not an infringement (the use on social media, t-shirts and on the van), as there was no evidence from actual consumers that this use indicated that Technosport was authorised by BMW. BMW appealed the latter element of the judgment.
The Court of Appeal considered the difference between informative use of trade marks, such as explaining that a business can repair BMW cars and uses genuine BMW spare parts, versus misleading use, which would indicate a false commercial connection. The use of trade marks by businesses such as those which specialise in repairs to specific brands of car, is not automatically an infringement of those marks; the important consideration was whether that use of the marks conveyed a true or false message to consumers.
The Court confirmed that it was responsible for assessing what message was conveyed to an ordinary consumer, rather than it being a requirement for the claimant to provide evidence from actual consumers. The court concluded that use of BMW’s trade marks in conjunction with Technosport’s own trading name, i.e. Technosport BMW, was more than informative and carried a risk of misleading use. Therefore BMW succeeded in its appeal.
This decision clarifies the law for those working with car repairs and genuine spare parts. The manufacturer’s mark can be displayed, as long as the services provided are made clear and there is no misleading message to consumers.
It is interesting to note that, although the court stated it was not BMW’s strongest argument, use of registered trade marks in social media handles can constitute trade mark infringement.
For any questions or further information please contact Margaret Arnott or Abigail Nicholls.
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