A brand owner cannot prevent an unauthorised dealer or maintenance service from using its registered trade mark to indicate that it sells or repairs the branded goods or that it is a specialist in such goods. However, if it goes further and uses the trade mark in a way that suggests a commercial connection with the brand-owner, for example that it is authorised, this will normally constitute trade mark infringement. The $million question in such cases, which arise frequently in practice, is where the line should be drawn. A decision handed down by the Court of Appeal on 21 June 2017 gives practical guidance on this point.
The case involved BMW and Technosport London Limited (TLL), an independent BMW and Mini specialist garage in North London.
The roundel and M logo
At first instance the Intellectual Property Enterprise Court (IPEC) held that the average consumer would believe that the well-known BMW Roundel and M Logo would only be displayed by an authorised BMW dealer, so that to the extent that TLL had used these marks it had infringed. This aspect of the judgment was not appealed.
The Technosport BMW signs
The issue which came before the Court of Appeal was whether TLL’s use of its trading name “Technosport” together with the BMW mark constituted infringement. There were three instances of this:
- Use on the shirt of a member of staff of the word TECHNOSPORT with the letters BMW immediately below;
- Use of the twitter handle @technosportBMW;
- Use of the words TECHNOSPORT – BMW across the top of the rear of a van.
Whereas at first instance the judge had held that further evidence would be required to establish the average customer’s perception, the Court of Appeal held that no further evidence was needed and that all these instances would be perceived as implying authorisation. As a result, they infringed. As Floyd LJ in the Court of Appeal commented, this was an important point for BMW, because if the IPEC judge had been correct any independent repairer could incorporate the letters BMW into its trading name in this way.
Implications of the decision
It is important to note that each case will depend on its own facts and what Floyd terms “a close consideration of the detail and context of the use”, so that general statements about what will or will not infringe should always be treated with caution. Nevertheless, the judgment strongly suggests that incorporation of the brand name into a trading style as in “Technosport BMW” without further explanation is likely to convey the impression of authorisation. Such use is, therefore, best avoided by those who wish to avoid a dispute. By contrast, descriptive phrases such as “BMW repair specialist” are unlikely to infringe.
Case: Bayerische Motoren Werke Aktiengesellschaft v Technosport London Limited and Another. Court of Appeal, 21.06.2017