Bayerische Motoren Werke Aktiengesellschaft v Round & Metal Ltd and another  EWHC 2099 (Pat), 27 July 2012.)
The High Court has ruled that replica alloy wheels for BMW and MINI cars do not fall within the "spare parts defence" but infringe BMW's Community registered designs.
BMW claimed that the defendants had infringed its Community registered designs (in respect of wheels for motor vehicles) by importing and selling replica alloy wheels, which were essentially of the same appearance as the BMW designs. The defendants denied infringement on the basis that the "spare parts" defence under Article 110(1) of the Community Design Regulations ("CDR") applied.
BMW also claimed that the defendants had infringed its Community trademarks by supplying stickers with the replica alloys bearing BMW's logos and by listing "18 BMW parallel wheels" for sale online at its eBay shop. The defendants denied that these acts amounted to trade mark infringement.
Community registered design infringement
Article 110(1) is a transitional provision (until amendments are made to the CDR) that excludes protection for Community designs which "constitute a component part of a complex product and are used to repair that product so as to restore it to its original appearance". The defendant had the burden of proving that the exception applied in the circumstances.
The High Court held that Art.110(1) had to be construed in accordance with recital 13 (of Regulation 6/2002) and was restricted to component parts which were dependent on the appearance of the complex product. Examples of component parts are body panels, bumpers and windows, all of which are dependent on the appearance of the complex product. The court said that the test of what is a component used to repair a product is an objective one. It is necessary to consider how the component part is normally used in practice, eg to repair the complex product when the part was broken or worn, or for another purpose such as upgrading the complex product by improving its appearance.
The Art.110(1) defence did not apply in the case of replica alloy wheels because:
- The design of the alloy wheels was not dependent on the appearance of the car (the complex product). Wheels of one design could be replaced with wheels of a different design; and
- Replica alloy wheels are not normally used to repair a car but to upgrade its appearance. In particular the defendant sold mostly sets of four wheels (it rarely sold single wheels), it did not sell exact replicas, and each was larger than the original. There were also differences in width and other dimensions.
Accordingly, the defendants had infringed BMW's Community registered designs.
Community trade mark infringement
The High Court rejected the defendants' argument that providing the logo stickers separately from the wheels would avoid confusion. The immediate purchasers of the wheels (garages) might not be confused about the origin of the wheels but there was a real risk that subsequent purchasers of the car to which the wheels bearing the stickers were fitted would take the stickers to denote the origin of the wheels. There was no evidence that the defendants made any attempt to ensure that end purchasers were told that the wheels did not emanate from BMW.
In respect of the online listings, the Court again held the "18 BMW parallel wheels" listings gave the impression that the wheels were genuine BMW wheels and there was therefore a real likelihood of confusion and trade mark infringement.
The case provides clarity on the scope of the "spare parts" defence under Art 110(1). Car manufacturers will welcome the interpretation of the defence as it only applies when the spare part is dependent on the original appearance of the complex product and the part's normal purpose is to repair the complex product and not to enhance or upgrade it.