Bayerische Motoren Werke AG v Technosport London Ltd and Another

JurisdictionEngland & Wales
CourtIntellectual Property Enterprise Court
JudgeHis Honour Judge Hacon,Judge Hacon
Judgment Date13 Apr 2016
Neutral Citation[2016] EWHC 797 (IPEC)
Docket NumberCase No: IP14M02599

[2016] EWHC 797 (IPEC)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY ENTERPRISE COURT

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

His Honour Judge Hacon

Case No: IP14M02599

Between:
Bayerische Motoren Werke AG
Claimant
and
(1) Technosport London Ltd
(2) George Agyeton
Defendants

Gwilym Harbottle (instructed by Palmer Biggs Legal) for the Claimant

Charles Irvine (instructed by Hoffman-Bokaei) for the Defendant

Hearing dates: 1–2 March 2016

I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

His Honour Judge Hacon Judge Hacon

Introduction

1

The claimant ('BMW') is a manufacturer of motor vehicles which are sold in this country and elsewhere under that well known mark.

2

The first defendant ('TLL') is a company dealing in the repair and maintenance of cars, mostly BMWs. It trades in North West London, formerly at 5 Adrian Avenue, Staples Corner, London NW2 1LW ('the Original Premises') and now at Unit 2, Horseshoe Close, London NW2 7JJ ('the New Premises') to which the business moved at the end of 2012.

3

TLL has used 'BMW', i.e. signs identical to BMW's trade marks, in the course of its business. BMW alleges that in so doing TLL has infringed those trade marks and passed off its services as being associated with, or approved by, BMW.

4

TLL denies both infringement and passing off. In broad terms it says firstly that its use of the signs did no more than accurately convey the message that TLL was a garage specialising in the maintenance and repair of BMW cars. Secondly, TLL argues that BMW had in any event authorised TLL to use the trade marks.

5

The second defendant ('Mr Agyeton') is the sole director and shareholder of TLL. BMW alleges that he is jointly liable with TLL.

The Trade Marks

6

Three registered trade marks are relied on (collectively 'the Trade Marks'):

(1) Community Trade Mark no. 000091835 in the form of the letters BMW ('the BMW Mark'), registered in respect of, among other things, the following services in Class 37: "maintenance and repair of cars, motors, engines and parts of these goods; cleaning of automobiles; installation services".

(2) Community Trade Mark no. 000091884 ('the Roundel'), a device mark in the following form:

The Roundel is registered in respect of, among other things, similar services in Class 37: "maintenance and repair of cars, motors and engines and parts of these goods; cleaning of automobiles; installation services".

(3) International registration no. 1000463 ('the M Logo'), designating the European Union, a device mark in the following form:

The M Logo is registered in respect of, among other things, the following services in Class 37: "Repair and maintenance of motor vehicles and parts thereof and of engines for motor vehicles and parts thereof; tuning of motor vehicles and engines."

TLL's uses of signs

Trade mark infringement

7

The following uses of the Trade Marks have been pleaded by BMW:

The BMW Mark

(1) (i) Mr Agyeton has worn a shirt bearing a sign identical or similar to the BMW Mark in the course of providing TLL's repair and maintenance services;

(ii) Mr Agyeton and/or TLL have owned a Twitter account with the name @TechnosportBMW.

The Roundel

(2) TLL has displayed a sign the same as, or similar to the Roundel on

(i) a facia board on the exterior of the Original Premises (which is also shown on the defendants' website at www.technosport.co.uk ('TLL's Website'));

(ii) in the interior of the New Premises particularly on a banner displayed in the reception area,

(iii) on the outside of a van used to conduct the business, and

(iv) on business cards distributed to customers.

The M Logo

(3) One or both defendants have displayed two signs on TLL's website, one of which is identical or similar to the M Logo, the other similar to it.

8

Allegations of other uses of signs by TLL cropped up during the trial but it is enough for me to consider the uses pleaded.

9

BMW alleged that the uses of the signs complained of were in each case an infringement of its corresponding Trade Mark pursuant to art.9(1)(a) and (b) of Council Regulation (EC) No. 207/2009 ('the Trade Mark Regulation') and, in the case of the BMW Mark and the Roundel, also art.9(1)(c) of the Trade Mark Regulation.

Passing Off

10

BMW alleges that TLL's uses of signs referred to above were likely to lead a substantial proportion of the public or trade to believe that TLL's services were those of BMW, or were associated in the course of trade with BMW. In effect this meant that customers and potential customers of the TLL would be caused to believe that TLL was an approved BMW dealer.

The issues

Trade marks

Art.9(1)(a) and (b)

11

Mr Irvine, who appeared for the defendants, did not dispute that the signs complained of were each either identical or similar to the Trade Mark that the sign was alleged to infringe, and that the services for which they were used were identical or similar to the services in respect of which the Trade Marks were registered. Thus the elements of infringement under both art.9(1)(a) or 9(1)(b) were satisfied subject to the two matters I summarised above. First, TLL argued that its use of the signs was not liable to affect the functions of the Trade Marks. This was because the signs as used by TLL would in each case have conveyed to the average consumer that TLL was a specialist in the repair and maintenance of BMW vehicles, using genuine BMW spare parts. It was common ground that such a message would have been accurate. Secondly, TLL said that BMW had given its consent to the use of the signs.

Art.9(1)(c)

12

In relation to art.9(1)(c) Mr Irvine submitted that a further element of infringement was missing, namely that the uses of signs complained of (the BMW and roundel signs) had not taken unfair advantage of the distinctive character or the repute of the Trade Mark concerned.

Art.12(b) and (c)

13

The defendants also relied on art.12(b) and (c) of the Trade Mark Regulation which provides as follows:

Article 12

Limitation of the effects of a Community trade mark

A Community trade mark shall not entitle the proprietor to prohibit a third party from using in the course of trade:

(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;

(c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts,

provided he uses them in accordance with honest practices in industrial or commercial matters.

14

Mr Irvine argued that TLL's use of the signs was to indicate a characteristic of TLL's services, namely that genuine spare parts were used (art.12(b)). The use was necessary to indicate the intended purpose of its services, namely that it repaired BMW cars (art.12(c)). But he also submitted that in this case the defence under art.12(b) and (c) stood or fell with his submission under art.9(1) that, as used by TLL, the signs complained of conveyed to the average consumer that TLL was a specialist in the repair and maintenance of BMW vehicles using genuine BMW spare parts. Art.12 therefore did not raise any distinct issue.

Passing off

15

Mr Irvine said that the message conveyed to the average consumer (in the trade mark sense) by the signs in issue would be the same as the message conveyed to a substantial proportion of the relevant public in the context of BMW's claim for passing off. There was therefore a large overlap with trade mark infringement. Mr Irvine said that if the message was as the claimants alleged, and there had been no consent by BMW to TLL's use of the signs, it followed that there had been a misrepresentation by TLL. The remaining elements of passing off (goodwill and damage) were satisfied and so TLL would then be liable for passing off.

The issues at trial

16

Pursuant to this, Mr Irvine summarised the issues I had to resolve. He said that they were the following:

(1) Did TLL's use of each of the signs, in the manner in which they were used by TLL, convey to the average consumer (and a substantial proportion of the relevant public) nothing more than that TLL was a specialist in the repair and maintenance of BMW vehicles, using genuine BMW spare parts?

(2) In the case of the BMW Mark and the Roundel, did TLL's use of the corresponding signs without due cause take unfair advantage of the distinctive character or repute of the Trade Marks?

(3) Did BMW consent to TLL's use of any of the signs in manner complained of?

(4) Was Mr Agyeton jointly liable with TLL for trade mark infringement and passing off if TLL is found liable?

17

Mr Harbottle, who appeared for BMW, did not dissent from this summary of what remained in dispute between the parties, save in one regard. He said that if, which BMW did not accept, there had ever been any consent to what TLL was doing, that consent had been withdrawn before the start of these proceedings.

The message conveyed by TLL's use of the signs

The Roundel

18

It was common ground that there are two types of dealer who specialise in the repair and maintenance of BMWs: those that are authorised by BMW and those that are not – often referred to as 'independent' dealers. Joanne Walsh, brand protection manager for BMW (UK) Limited ('BMW UK') explained that in the UK the former have a contractual relationship with BMW UK and the latter do not. Use of the Trade Marks by authorised dealers is...

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