The issue of how unauthorised dealers may make use of trade marks in relation to genuine spare parts and repair services has often sat uncomfortably in the context of trade mark infringement. Following the Court of Appeal's recent decision in BMW v Technosport, there is now clarification as to when a brand owner may object to use of their marks which goes further than merely describing the services offered and implies an association with the brand owner.
As expected for a famous vehicle manufacturer, BMW owns a number of trade mark registrations to protect its brand, including the word mark "BMW" and a roundel device incorporating the initials "BMW" (below):
Technosport is a vehicle repair and maintenance company specialising in BMW cars. It is not, however, part of BMW's authorised third party network. Technosport had used BMW's trade marks in various ways which formed the basis of this dispute. In April 2016, the Intellectual Property Enterprise Court (IPEC) held that there was infringement in relation to use on the exterior and interior of Technosport's business premises, their business cards and on Technosport's website. These examples all made use of BMW's roundel device.
However, HHJ Hacon held that that use of the Twitter handle "@TechnosportBMW" and use of the BMW word mark together with Technosport on t-shirts and on the company's van was not infringement. This was appealed by BMW to the Court of Appeal.
Unauthorised dealer use has been considered previously by the courts, particularly within the automobile industry. In this judgment, the Court of Appeal recalled the CJEU's decision in Bayerische Motorenwerke AG and another v Deenik, and summarised the relevant test as the differentiation between informative use vs. misleading use. The latter constituted infringement as consumers may be misled into thinking the third party was commercially connected with the rights holder. BMW was therefore correct not to attack Technosport stating they were "The BMW specialists", as this was merely informative.
Technosport maintained that their use "did no more than accurately convey the message that [they were] a garage specialising in the maintenance and repair of BMW cars." However, the Court of Appeal held that as there was nothing to explain that Technosport's use was simply informative, all three types of use (Twitter, t-shirts and on the van) were held to be misleading and therefore an infringement of BMW's trade marks. It was noted that it didn’t matter that Technosport's use differed from the use of BMW's marks by their authorised dealers, as consumers would not appreciate this.
The Court of Appeal also held that IPEC had been incorrect to require evidence from actual consumers as to their impression of Technosport's use.
The Court of Appeal overturning the IPEC's decision will no doubt be welcomed by brand owners. For third parties, this provides a practical example of the careful line to be taken when wishing to use brand owners' marks and the judgment provides some clear guidance for those operating in the spare parts and repairs market.
The Court of Appeal helpfully and clearly sets out the distinction between 'informative use' and 'misleading use':
- Informative use applies to 'uses which convey the true message "my business provides a service which repairs BMWs and or uses genuine BMW spare parts"'; and
- Misleading use applies to 'those [uses] which convey the false message "my repairing service is commercially connected with BMW"'.
Unauthorised third parties should be vigilant and ensure that they are using a brand's trade mark/s only as a description of what they do, as opposed to an identifier of their own business and/or services. Perhaps one way to attempt to avoid the implication of a commercial connection between the third party and the brand, is for a third party to make any trade mark use visually distinct from their company name.
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