English High Court, Decision of 27 July 2012, No.  EWHC 2099 (pat), Bayerische Motorenwerke AG v. Round and Metal Ltd & Philip David Gross
The English High Court ruled that a UK importer and seller of replica BMW alloy wheels could not rely on the "repair of a complex product" defense, available under the Community Designs Regulation (CDR), holding that the defendant had infringed BMW's registered designs for the wheels. The defendant had also infringed BMW trademark registrations by supplying with the wheels stickers bearing BMW trademarks.
BMW brought proceedings in the High Court in England against Round and Metal Ltd (R&M) for infringement of four of its Community designs.
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Wheels made to these designs were sold by BMW as factory upgrades (costing more than factory standard wheels) or by dealers as retro-fit accessories (sold or exchanged for the factory standard wheels by the dealer). Whilst the upgrades and retro-fit wheel designs were sympathetic to the design of each relevant model of BMW car, these designs were just some in a range of different wheel designs marketed by BMW as being suitable for each model. Therefore customers were not restricted to a particular design of wheel for a given model of car.
The judge said that R&M had imported into the UK and sold replica alloy wheels essentially of the same appearance as BMW's registered designs. Therefore R&M had committed acts of infringement of the designs.
The question was whether R&M could rely on the defense of "repair of a complex product" under Article 110 of the CDR which provides that "protection as a Community design shall not exist for a design which constitutes a component part of a complex product used […] for the purpose of the repair of that complex product so as to restore its original appearance."
The judge stated that the defense only applied to component parts of a complex product "upon whose appearance the protected design is dependent", i.e. it only enabled the replacement of parts which had to match the overall design of the product. The purpose of the defense was to ensure that an original manufacturer could not monopolize the aftermarket in spares where the owner of the product had no realistic alternative to replacing the part with one of the same design if the original part became damaged. In the case of a motor car, this meant parts such as body panels, bumpers and windows.
The judge said that in the case at issue, the designs of the alloy wheels were not dependent on the appearance of the car, because the replacement of wheels of one design (e.g. the factory standard) with wheels of a different design (e.g. the retro-fit wheels) was a realistic option. In addition, the replica wheels sold by R&M were normally not used for repairing BMW cars but rather for upgrading them. Also, R&M provided its customers with wheels stickers bearing BMW logos for attaching to the wheels.
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The judge noted that if a customer was buying a replica to replace a damaged (original) wheel there would be no need for such stickers.
It was the supply of these stickers, bearing BMW logos registered as Community trademark that amounted to trademark infringement.