- July 6, 2017
- Posted by: Josiah Hincks Solicitors
- Category: Business Law Updates
Vast investment in nurturing public recognition of trade marks is almost equalled by the resources that go into protecting them against misuse. In one case, motor manufacturing giant BMW triumphed in infringement proceedings against a small company that repaired and maintained its vehicles.
The company had no formal connection with BMW, save as a purchaser and user of its spare parts. However, it made extensive use of the BMW name and other trade marks, including the famed BMW roundel, in advertising itself to the public.
After BMW took legal action, a judge found that the use of the roundel and another trade mark on the facia board at the front of the company’s premises, on a banner and on its business cards all amounted to acts of infringement. However, he ruled that the use of the BMW name on T-shirts, a van and the company’s Twitter account were legitimate.
In challenging the latter ruling before the Court of Appeal, BMW pointed out that the company’s trading name had been placed immediately adjacent to the BMW trade mark in a manner favoured by many of its authorised dealers. The words were separated only by a hyphen and gave the impression to average consumers that the company was in some way commercially connected to BMW.
In upholding the appeal, the Court found that the judge had erred in principle. There was no obligation on BMW to produce further evidence from actual consumers in order to establish that the immediate juxtaposition of the trade mark with the name of the company conveyed the impression that the latter was an authorised dealer. Such use was more than simply informative of the company’s field of operation and gave rise to an obvious risk of customer confusion.