Auto suggestion by use of BMW
The BMW vs Technosport case arose from the unauthorised use of BMW’s trade marks in the UK by an independent repair services provider, Technosport.
The case before the court
While BMW succeeded on most grounds in the initial infringement case, its appeal concerned mainly the issue of use of its registered trade mark BMW by the Respondents. This use was use of the BMW trade mark in the Respondents’ trading name as TECHNOSPORT-BMW used prominently on the van used by the Respondents, use on shirts with the trade mark BMW appearing below the word TECHNOSPORT or as TECHNOSPORT BMW and in their Twitter account as @TechnosportBMW. The Respondents are an independent business dealing in the repair and maintenance of cars, mostly BMW motor cars and Minis, and it was BMW’s contention that the manner of use of its trade mark by the Respondents would lead the average consumer to mistakenly believe that the first Respondent was a BMW authorised business.
It was BMW’s concern that if such use did not amount to infringement any independent repairer could incorporate the letters BMW into its trading name, without infringing its registered BMW trade mark.
The Court of Appeal stated that the use of a trade mark as part of a trading style is intended to make a statement about the identity of the business and the services it provides. Such use may indicate a connection between the business operated under that name and the proprietor of the registered trade mark. The use of a registered trade mark in conjunction with another’s trading name will amount to infringing use if it identifies the user’s business as having a commercial connection or being economically linked in some way with the business of the registered trade mark owner. This was contrasted with the use of a third party’s trade mark being merely for informative purposes to make a consumer aware of the type of services provided by the business.
The Court also commented that the name of a business as the provider of the services is much more readily, if not invariably, taken to be use in relation to the services offered. Any use of a registered trade mark within a trading name in a way which is prone to give the impression of authorisation is not mere informative use.
The important issue to be decided is whether such an impression is conveyed or whether there is even a risk that it would be.
The Court of Appeal held that each of the uses of the Technosport BMW signs carried the risk that it would be understood as authorised use. The use of BMW was a simple incorporation into the name of the First Respondent, and was not in connection with words such as ‘repair specialist’ or similar terminology to make it visually distinct from the name TECHNOSPORT. Technosport’s use of the BMW marks was more than merely informative use.
The Automotive Industry
This case is a good example of when a use of a registered trade mark by independent third parties would infringe the rights of the registered proprietor. Service providers usually hold themselves out to be competent to provide repair and maintenance services for a variety of automobiles by the use of the trade marks of the respective automotive manufacturers.
Given the critical importance of proper servicing, maintenance and repair of automobiles, manufacturers would be keen to ensure that only their authorised service providers use their trade marks in a manner which conveys to the customers that the service provider’s repair and maintenance services are endorsed or specifically authorised by the automobile manufacturer. Since regular maintenance, servicing and repair of automobiles are often offered by a large number of third parties the correct manner of use of automotive manufacturers’ trade marks is particularly important.
This case highlights situations in which registered proprietors/rights owners can be confident of asserting their rights when there is clearly a risk that the use of their mark by a third party creates a misleading impression of authorisation or endorsement by the rights owner.