London Repair Garage found to infringe BMW’s Trade Mark Rights
This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.
Decision of Hacon J, Intellectual Property Enterprise Court, 13 April 2016.
The well-known German car manufacturer, BMW, brought successful trade mark infringement proceedings against an independent car repair garage, based in North West London. Technosport London Ltd. (“TLL”), serviced and repaired all makes of car, but specialised in BMWs (advertising themselves as “The BMW Specialists”).
The Court also found Mr Agyeton, the sole director and shareholder of TLL, jointly liable for trade mark infringement.
BMW owned numerous European trade mark registrations for its famous marks, each in respect of car maintenance and repair services.
No Infringement for use of “TechnosportBMW” Word Mark:
Given the settled law in this area regarding use of trade marks by garages and dealers to describe their experience in repairing or servicing certain makes of car, BMW made no complaint of TLL’s use of “The BMW Specialists” slogan.
However, BMW did claim infringement with regard to TLL’s use of the trading name “TechnosportBMW” displayed on clothing worn by TLL’s employees whilst servicing BMW cars, and its use of TLL’s “@TechnosportBMW” Twitter handle. BMW argued that this format of use mirrored the strict naming convention it demanded from its authorised dealers, and therefore, would cause confusion amongst consumers who might mistakenly conclude that TLL was an authorised BMW dealer.
Hacon J disagreed, and found it unlikely that an average consumer would perceive or interpret such subtleties when confronted by TLL’s ‘TechnosportBMW signs. The Judge suggested BMW would need to adduce more evidence that a likelihood of confusion arose, if they were to convince him that TLL’s “TechnosportBMW” signs infringed BMW’s word mark registration.
Infringement of the “BMW Roundel” under Art 9(1)(b):
TLL also made liberal use of BMW’s famous blue and white Roundel mark; it was used on both the inside and outside of their premises, on the outside of their commercial vehicles, and on their business cards. BMW alleged trade mark infringement under Art 9(1)(b) of Council Regulation (EC) No. 207/2009 (the CTM Regulation, as it then was), which requires BMW to demonstrate that TLL is using a sign which was identical with or similar to BMW’s registered Roundel mark in respect of identical or similar services, and that TLL’s use will create a likelihood of confusion amongst average consumers. Key to this assessment, is the perception of the average consumer.
TLL, in mounting their defence, adduced web-based forum evidence showing people discussing TLL and its services, who were clearly aware that TLL was an independent (and not an authorised) garage. Hacon J quickly dismissed this evidence on the basis it proved nothing about the general perception of the message conveyed by the Roundel, given the evidence largely related to customers that existed prior to TLL’s use of the BMW Roundel.
In making out their claim for infringement, BMW referred the Court to the case of Interflora v Marks & Spencer Plc. (2011 E.C.R. I-8625), which concerned Marks & Spencer’s use of Interflora’s trade mark as a keyword on Google’s search engine, with the result that users would be presented with advertisements from Marks & Spencer, offering a flower delivery service.
The Court of Justice of the European Union (“CJEU”) held that a trade mark proprietor is entitled to prevent a competitor from using his trade mark, as a keyword, where a third party’s advertisement is liable to have an adverse effect on one of the functions of the trade mark (e.g. origin).
BMW contended that an analogy could be drawn from the average consumer’s perception of whether there is an economic link between the advertiser and the trade mark proprietor in the circumstances of Interflora, and the average consumer’s perception of the message conveyed by the Roundel in the present case.
Hacon J agreed, explaining that if TLL's use of BMW’s roundel sign conveyed a message which was vague, such that the average consumer would have been unable to determine whether there was an economic link between TLL and BMW (or whether TLL was an authorised BMW dealer), then it must be concluded that TLL's use of BMW’s Roundel sign adversely affected the function of the trade mark and therefore infringed BMW's registered rights.
Infringement of the “BMW Roundel” under Art 9(1)(c):
BMW also alleged infringement of the Roundel mark under Art 9(1)(c) of the former CTM Regulation, (now Art 9(2)(c) of the EUTM Regulation). Under the provision, BMW can prevent TLL from using their trade mark where they can adduce evidence that BMW had a reputation in the logo within the EU, and that TLL’s use of that logo without due cause, takes unfair advantage of, or is detrimental to the distinctive character or repute of BMW’s Roundel mark.
In this case, the parties accepted BMW’s EU-wide reputation, and TLL admitted that they held no due cause for using the mark. Therefore, the only issue for the Court to determine was whether unfair advantage had been taken.
Hacon J noted that Arnold J had recently considered this concept, having reviewed the CJEU’s authority ruling in L’Oreal SA v Bellure NV (2009 ECR I-5185), which explained at paragraph 41, that taking unfair advantage of the distinctive character or the repute of the trade mark, is a concept that relates not to the detriment caused to the earlier reputed mark, but to the advantage taken by the third party as a result of the use of the identical or similar sign.
The case explains that where a third party attempts to use a sign similar to a mark with a reputation, in order to benefit from its power of attraction, reputation and prestige, and exploit it without paying any financial compensation and without having to make the marketing effort expended by the proprietor of the reputed mark, the resulting advantage must be considered to be an advantage that has been unfairly taken.
Somewhat ill-advisedly, Mr Agyeton had mentioned in cross-examination that TLL had used the Roundel “because it was good for business” - although he maintained this was because he was trying to enhance TLL’s business in selling genuine BMW parts, not because he was trying to represent TLL as an authorised dealer.
Hacon J found that the Roundel did convey to the average consumer that TLL was an authorised dealer, explaining that it’s the objective effect of the use of the mark that matters, not the user’s subjective intention. Accordingly, the Judge found that TLL’s use of BMW’s Roundel mark was also an infringement under Art 9(1)(c), with unfair advantage clearly taken.
TLL: “But BMW Consented to our Use!”
In a final attempt to defend itself, TLL claimed that BMW had consented to its use of the BMW and Roundel marks, since individuals from BMW UK (and from authorised dealers), had visited TLL's premises and made no complaint about TLL’s use of the Roundel logo. From this, it was clear that TLL had no evidence of express consent supplied by BMW.
Under the case law in the absence of express consent by a trade mark proprietor to use his/her mark, consent will only be inferred in very limited circumstances. Moreover, irrespective of whether express or inferred, the intention to renounce the rights conferred by trade mark registration must be unequivocally demonstrated. (Zino Davidoff SA v A&G Imports Ltd. (Joined cases C-414 to 416/99 [2002] Ch. 109).
Accordingly, Hacon J found there was no such consent given by BMW to TLL to use the trade marks, and no demonstration by BMW, unequivocal or otherwise, that there was.
Furthermore, given BMW had issued two earlier cease and desist letters to TLL (each of which had clearly detailed their concerns), Hacon J found that Mr Agyeton could have been in no doubt at all that he had no consent to use BMW’s trade marks.
Comment:
This case was decided in line with well-established jurisprudence and relatively uncontroversial legal principles. The legal merits weighed clearly in the claimant’s favour. Yet still, this case demonstrates that even in such circumstances, even the most well-resourced of brand owners must be prepared to commence proceedings in order to assert their rights, and maintain (at least) the perception that there’s a clear and unwavering policy of restraining unauthorised use. On the other side of the coin however, brand owner enforcement policies must be alive to the threat of negative PR when engaged in disputes with a markedly ‘smaller’ entity.
