Bayerische Motoren Werke Aktiengesellschaft v Round and Metal Ltd and Another

JurisdictionEngland & Wales
JudgeMR JUSTICE ARNOLD
Judgment Date27 July 2012
Neutral Citation[2012] EWHC 2099 (Pat)
Docket NumberCase No: HC11C02291
CourtChancery Division (Patents Court)
Date27 July 2012

[2012] EWHC 2099 (Pat)

IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION

PATENTS COURT

Rolls Building

Fetter Lane, London, EC4A 1NL

Before:

The Hon Mr Justice Arnold

Case No: HC11C02291

Between:
Bayerische Motoren Werke Aktiengesellschaft
Claimant
and
(1) Round and Metal Limited
(2) Philip David Gross
Defendants

Piers Acland QC and Hugo Cuddigan (instructed by Mishcon de Reya) for the Claimant

Mark Platts-Mills QC and Jonathan Hill (instructed by Simons Muirhead & Burton) for the Defendants

Hearing dates: 5–6, 10 July 2012

Approved Judgment

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.

THE HON MR JUSTICE ARNOLD MR JUSTICE ARNOLD

Contents

Topic

Paragraphs

Introduction

1–4

The witnesses

5–7

BMW's Community Registered Designs

8–11

BMW's claim for infringement of its Community Registered Designs

12–87

Legal Context

12–17

The Community Design Regulation

12–13

The Designs Directive

14–16

TRIPS

17

The legislative history of recital (13) and Article 110

18–37

The proposal for an amending Directive

38–46

Interpretation of Article 110(1)

47–75

Burden of proof

48–52

Dependency

53–70

Purpose

71–73

Original appearance

74–75

A reference to the CJEU?

76

The present case

77–87

Dependency

78–81

Purpose

82–86

Original appearance

87

BMW's Community Trade Marks

88–93

BMW's claim for infringement of the Community Trade Marks

94–115

The legal context

94–95

Infringement under Article 9(1)(a): the law

96

Infringement under Article 9(1)(b): the law

97

Defence under Article 12(b) and (c): the law

98–99

Defence under Article 13: the law

100

The present case

101–115

Logo stickers

102–108

eBay store

109–114

Conclusion

115

Passing off

116

The counterclaims

117

Conclusions

118

Introduction

1

The First Defendant ("R & M") imports and sells replica alloy wheels for motor cars, including replicas of alloy wheels designed by the Claimant ("BMW") for BMW and MINI cars. BMW claims that R & M has thereby infringed several of BMW's Community Registered Designs. R & M denies infringement. Who is right depends on the correct interpretation of Article 110(1) of the Council Regulation 6/2002/EC of 12 December 2001 on Community designs ("the Community Designs Regulation"), which is the principal issue in these proceedings.

2

BMW also advances subsidiary claims that R & M has infringed a number of BMW's Community Trade Marks and committed passing off. R & M denies that its acts amount to either infringement or passing off.

3

There is no dispute that the Second Defendant, known as David Gross, is jointly liable for any infringements of BMW's rights that R & M has committed.

4

R & M has a number of counterclaims, in particular for relief in respect of (i) the detention by the UK Border Agency at BMW's behest of a consignment of alloy wheels in June 2011 and (ii) a letter before action sent by BMW's solicitors to R & M and others on 22 June 2011. It is common ground that these counterclaims only arise if BMW if unsuccessful in its claims.

The witnesses

5

BMW called two witnesses. The first was Roy Hurst. From 1996–2009 he worked for a BMW dealership in Bournemouth, first as a Parts Adviser and then as Parts Manager. In this role, he was in contact with bodyshops (including BMW and BMW-approved bodyshops), trade and counter customers and independent repairers. In 2009 he joined BMW Group UK (a wholly-owned subsidiary of BMW) as an Accessories Consultant. Since September 2010 he has been employed by BMW Group UK as Retail Sales Development Manager for Parts and Accessories. I found Mr Hurst to be a knowledgeable and reliable witness. It is not a criticism of him to say that he inevitably tended to see matters from BMW's perspective.

6

The second witness was Bettina May. She has been employed by BMW as Legal Counsel for Intellectual Property Law with particular responsibility for the UK and Ireland. Some of her evidence was really hearsay evidence, but subject to that she was a reliable witness.

7

The Defendants' only witness was David Gross. Cross-examination revealed that some of the evidence contained in his first witness statement was untrue. I am not sure that Mr Gross intended to mislead the court, but I do think he approached the preparation of his statement in a rather cavalier manner. I have therefore treated his evidence with some caution.

BMW's Community Registered Designs

8

BMW alleges infringement of four Community Registered Designs of which it is the registered proprietor ("the Community Registered Designs"). The first is Community Registered Design No. 000032438–0004 registered as of 19 May 2003 in respect of "wheel for motor vehicle" for the following design (for convenience, I shall reproduce only one of the representations for each Design):

9

The second is Community Registered Design No. 000304274–0004 registered as of 3 March 2005 in respect of "wheels for motor vehicles" for the following design:

10

The third is Community Registered Design No. 000609458–0006 registered as of 16 October 2006 in respect of "wheels for motor vehicles" for the following design:

11

The fourth is Community Registered Design No. 000936281–0005 registered as of 19 May 2008 in respect of "wheels for motor vehicles" for the following design:

BMW's claim for infringement of its Community Registered Designs

Legal context

12

The Community Design Regulation. The regulation includes the following recitals:

"(9) The substantive provisions of this Regulation on design law should be aligned with the respective provisions in Directive 98/71/EC.

(13) Full-scale approximation of the laws of the Member States on the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the design is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the protected design is dependent, could not be achieved through Directive 98/71/EC. Within the framework of the conciliation procedure on the said Directive, the Commission undertook to review the consequences of the provisions of that Directive three years after the deadline for transposition of the Directive in particular for the industrial sectors which are most affected. Under these circumstances, it is appropriate not to confer any protection as a Community design for a design which is applied to or incorporated in a product which constitutes a component part of a complex product upon whose appearance the design is dependent and which is used for the purpose of the repair of a complex product so as to restore its original appearance, until the Council has decided its policy on this issue on the basis of a Commission proposal."

13

The Regulation includes the following substantive provisions:

"Article 3

Definitions

For the purposes of this Regulation:

(c) 'complex product' means a product which is composed of multiple components which can be replaced permitting disassembly and re-assembly of the product.

Article 19

Rights conferred by the Community design

1. A registered Community design shall confer on its holder the exclusive right to use it and to prevent any third party not having his consent from using it. The aforementioned use shall cover, in particular, the making, offering, putting on the market, importing, exporting or using of a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

Article 20

Limitation of the rights conferred by a Community design

1. The rights conferred by a Community design shall not be exercised in respect of:

[various acts]

2. In addition, the rights conferred by a Community design shall not be exercised in respect of:

[various acts]

Article 110

Transitional provision

1. Until such time as amendments to this Regulation enter into force on a proposal from the Commission on this subject, protection as a Community design shall not exist for a design which constitutes a component part of a complex product used within the meaning of Article 19(1) for the purpose of the repair of that complex product so as to restore its original appearance.

2. The proposal from the Commission referred to in paragraph 1 shall be submitted together with, and take into consideration, any changes which the Commission shall propose on the same subject pursuant to Article 18 of Directive 98/71/EC."

14

The Designs Directive. Recital (19) of European Parliament and Council Directive 98/71/EC of 13 October 1998 on the legal protection of designs ("the Designs Directive") is in the following terms:

"Whereas the rapid adoption of this Directive has become a matter of urgency for a number of industrial sectors; whereas full-scale approximation of the laws of the Member States on the use of protected designs for the purpose of permitting the repair of a complex product so as to restore its original appearance, where the product incorporating the design or to which the design is applied constitutes a component part of a complex product upon whose appearance the protected design is dependent, cannot be introduced at the present stage; whereas the lack of full-scale approximation of the laws of the Member States on the use of protected designs for such repair of a complex product should not constitute an obstacle to the approximation of those other national provisions of design law which most directly affect the functioning of the internal market; whereas for this reason Member States should in the meantime maintain in force any provisions in conformity with the Treaty...

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