It’s always been a grey area of the law, and no more so than in the car industry: when can you legitimately use a third party’s trade mark to indicate the intended purpose of a product or service? Here, Trade Mark Attorney and Partner, Lucy Walker, talks us through the issues surrounding this matter, using the recent BMW court case to illustrate her points, before advising what traders in a similar position should do to avoid falling foul of the law.
How the problem arises
Garages will often use the trade mark of an automotive company to inform the public you are carrying out the repair and maintenance of that particular automotive company’s products or you sell parts for that particular company’s vehicles. Use in this way is permitted by trade mark law because using a trade mark in this way is viewed as a purely descriptive use for informative purposes only.
For example, a garage which sells parts for a BMW car will want to make it clear in its advertising that it is selling parts for a BMW car. Merely saying it is selling ‘car parts’ will be detrimental to the business. It needs to be able to specifically list the brand of the parts it is selling, to inform customers that they are the right garage for the job.
However, the limitation on a third party’s ability to use someone else’s mark is set at a certain level. This prevents the use of a trade mark in such a way that creates the impression that there is a commercial link between the trade mark owner and the party using the mark. This seems perfectly reasonable but, in legal terms, this has created a grey area.
BMW versus Technosport
These shades of grey were recently exposed and tested during the recent case of BMW v Technosport London Limited  EWCA Civ 779. In this instance The Court of Appeal examined exactly what can and cannot be done in terms of referring to another party’s trade mark, setting out some much needed clarification in the law.
It was alleged by BMW that Technosport had been using three of their registered trade marks – the BMW word mark, the BMW “roundel”, and the “M logo” as follows:
- On a facia board outside the business premises;
- In the interior of their business premises;
- On business cards;
- On its website;
- On its official shirts they used the mark BMW together with the word “Technosport”;
- On Twitter, including in the Twitter handle @TechnosportBMW; and
- On the rear of its van they used the roundel device together with the word “Technos BMW”.
The Court of Appeal summarised the legal position as being:
- An example of the correct definition of ‘informative use’ is: “My business provides a service which repairs BMWs and/or uses genuine BMW spare parts”. Such use is fine.
- An example of a misleading use of ‘informative use’ is: “My repairing service is commercially connected with BMW”. This use is not fine and would infringe the registered trade mark.
On this basis, the Court of Appeal maintained that Technosport’s uses of the BMW mark (as listed at point one to four in this article) infringed the automotive company’s trade mark rights.
In terms of Technosport’s use of the mark on the shirts, there was no context to indicate this was merely informative use and so it conveyed the impression BMW had approved the shirts. Therefore, this was misleading use of BMW’s trade marks and as such, infringed their rights.
In respect of using the trade mark on the rear of the van, again this was infringing use. There was nothing to indicate that the use was informative use; the use of BMW’s trade mark within the Technosport’s trading style and without further explanation would lead the average consumer to assume there is some form of connection.
Finally, the use of the BMW mark in respect of the Twitter account was another example of Technosport giving the impression of authorisation from BMW and so again, was infringing.
The law in practice
As the BMW versus Technosport case has demonstrated, there is a fine line between what you can and cannot do with a third party’s trade mark when you are advertising your services. This decision provides much needed clarity and a clear test for practical application across the spare parts and repairs world for both the garages and the automotive companies.
Today, it is more apparent to a garage what it can and cannot do in terms of using a third party’s trade mark. For automotive companies, it is clear how far the scope of the defence extends and what they can and cannot prevent in terms of third party use of their marks. This reduces distractions and gives everyone involved more time to spend on developing their businesses.