BMW finishes first in appeal

The Court of Appeal (CoA) has recently decided on an appeal by BMW relating to its dispute with Technosport, a garage in North West London (see the full decision here). You can read our more in depth write up of the original IPEC decision here, but as a quick reminder, BMW originally brought a claim for trade mark infringement and passing off against Technosport for their various uses of the BMW word mark, M logo and roundel. In particular, BMW complained of the following uses by Technosport:

Use of the word mark ‘BMW’ on t-shirts, a van and the Twitter account handle ‘@TechnosportBMW’;
Use of the BMW roundel on shop facia boards, internal signage, a van, the website and on business cards; and
Use of the M logo on the website.

BMW argued that Technosport’s uses of the marks implied a connection between the parties and was therefore misleading and amounted to trade mark infringement and passing off. Whereas Technosport contended that their uses were to inform the public, and no person would be confused, therefore there should be no trade mark infringement and/or passing off. IPEC found that use of the BMW roundel and M logo by Technosport amounted to trade mark infringement (and passing off), but use of the word mark alone did not. The judge took the view that consumers would be more likely to understand and interpret the use of the logo/roundel as implying an official connection with BMW. Following this decision, BMW appealed to the CoA contending that IPEC was wrong to conclude that Technosport’s uses of the word mark (uses 1) did not constitute trade mark infringement and/or passing off. In considering the appeal, the CoA made a distinction between what they termed ‘informative use’ and ‘misleading use’. The former, ‘informative use’ they deemed not to be infringing use, as they stated it serves to inform consumers, for instance where a business advertises that they provide a service which repairs BMWs and/or uses genuine BMW spare parts. However, the latter, ‘misleading use’ they deemed to be infringing use, as it suggests a commercial connection with another party, here for example where a party advertises that their service is commercially connected with BMW. Dealing with each of the appealed uses in turn, the CoA found that use of the BMW word mark:

On the t-shirts was infringing, as there was nothing to suggest that the use was merely informative, instead the use here was considered to be a trading style which conveyed the impression of authorisation by BMW;
On the van was infringing, as again there was nothing to suggest that the sign TECHNOSPORT-BMW indicated that the BMW word mark was being used informatively, and that use of the BMW word mark within a trading style in this way, without further explanation, ‘…is naturally taken by the average consumer as an identifier of the business and the services it provides’; and
In the Twitter account handle was infringing, as although not BMW’s strongest point, the CoA held that this use within a trading name was prone to give an impression of authorisation, consistent with the two uses above.

The CoA therefore allowed BMW’s appeal, finding trade mark infringement (and passing off which followed such infringement) in relation to all three uses as noted above (the t-shirts, the van and the Twitter account handle). This decision addresses the distinction made by IPEC at first instance, and allows brand-owners to breathe a bit more easy, giving greater clarity to referential use. It also perhaps warrants some traders to re-assess their current use of other brands – in particular considering whether their use is ‘informative use’ and permitted, or whether it may be considered to be ‘misleading use’ and thus infringing.

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