The UK Court of Appeal has ruled that an independent garage infringed BMW’s trade mark by purporting to be affiliated with the brand through their advertising and online activity. The ruling follows a similar earlier Irish High Court decision in 2013.
BMW alleged that Technosport London Limited (“TLL”), an independent garage who provide repair and maintenance services for BMW motors but is not an official BMW garage, had infringed three of its registered trade marks: the BMW word mark, the BMW "roundel" and the "M logo". The infringing activity included using:
- BMW's registered trade marks on the interior & exterior of its business premises;
- "Technosport - BMW" on TLL’s vans;
- "Technosport BMW" on staff uniforms; and
- "@Technosport BMW" as TLL’s Twitter handle.
This use of the trade marks was found to cause confusion to consumers as to whether the garage was affiliated in some way with the BMW brand.
In considering whether or not the garage was infringing the trademarks the Court of Appeal distinguished between:
- informative use (i.e. "my business provides a service which repairs BMWs and/or uses genuine BMW spare parts") which is not an infringement; and
- misleading use (i.e. "my repairing service is commercially connected with BMW") which is an infringement.
The trade marks could have legally been used in an informative way if TLL provided further information that it was simply a specialist in BMW motors. By way of example, the court held that BMW rightly took no objection to the use by TLL of the slogan "The BMW specialists" on the facia of their old premises, separated from the name identifying the business, namely Technosport.
The Court of Appeal's test has brought much needed clarity to the interplay between spare parts, motor repairs and intellectual property, which has a long and complicated history.
In the similar case before the Irish High Court, Mr. Justice Ryan found infringement of BMW’s trade mark by a garage trading as “BMWCare”. He held that use of the BMW's trade marks, without due cause, took “unfair advantage of the distinctive character of the trade marks and of their reputation”.