BMW successfully brought a claim against an independent car repair garage, Technosport London Ltd, which had been using BMW’s trade marks to advertise its services. The court also found the sole director of Technosport jointly liable for infringement.
The court examined the circumstances in which a third party, who had no contractual relationship with the brand owner, may use protected marks.
Technosport had been using the BMW roundel and ‘M’ logo at its premises, on its van, and on business cards. In both cases the marks were registered in relation to car maintenance and repair services, amongst other things. In addition, Technosport owned a Twitter account with the handle “@TechnosportBMW”, and the director of the company had worn a shirt with the BMW word mark.
Perception of the average consumer
Technosport argued that the use of the marks conveyed nothing more to the average consumer than that Technosport was a specialist in repairing and maintaining BMW vehicles, and that genuine BMW parts were used.
In reaching its decision, the court considered the case of Interflora v Marks and Spencer PLC, which concerned the search term ‘interflora’ returning links to Marks and Spencer’s own flower delivery service. The court agreed that if the use of the marks suggested (or was vague as to) an economic link between the brand owner and the third party using it, there was a detrimental effect on the origin purpose of the mark.
The court found that consumers would believe that these marks would only be displayed at premises that were authorised dealers. Even if the consumer was unable to determine if Technosport was an authorised dealer, the very fact that they would contemplate it would adversely affect the origin function of BMW’s marks. BMW was unable to demonstrate that the use of the BMW word used on the shirt and as a Twitter handle implied that Technosport was an authorised dealer, as the average consumer would not discern the subtle distinctions of BMW’s strict naming conventions for authorised dealers. This indicates that the courts may be more lenient when considering word marks rather than logos.
This case shows that while there are circumstances in which third parties may make use of trade marks to advertise genuine goods and services, brand owners can object where the use of the mark goes beyond this and suggests a relationship between the parties.