Bayerische Motoren Werke Aktiengesellschaft (a company incorporated under the laws of Germany) v Technosport London Ltd and Another

JurisdictionEngland & Wales
JudgeLord Justice Floyd,Lord Justice Patten
Judgment Date21 June 2017
Neutral Citation[2017] EWCA Civ 779
CourtCourt of Appeal (Civil Division)
Docket NumberCase No: A3 2016 1801
Date21 June 2017

[2017] EWCA Civ 779

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM THE HIGH COURT OF JUSTICE

INTELLECTUAL PROPERTY ENTERPRISE COURT

HHJ Hacon

[2016] EWHC 797 (IPEC)

Royal Courts of Justice

Strand, London, WC2A 2LL

Before:

Lord Justice Patten

and

Lord Justice Floyd

Case No: A3 2016 1801

Between:
Bayerische Motoren Werke Aktiengesellschaft (a company incorporated under the laws of Germany)
Appellant
and
(1) Technosport London Limited
(2) George Agyeton
Respondents

Gwilym Harbottle (instructed by Palmer Biggs IP, Solicitors) for the Appellant

Charlotte Scott (instructed by Patron Law) for the Respondents

Hearing date: June 8 2017

Lord Justice Floyd
1

The appellant ("BMW") appeals against a decision dated 13 April 2016 of HHJ Hacon, sitting in the Intellectual Property Enterprise Court and his consequent order, by which he dismissed parts of the trade mark infringement and passing off action which BMW had brought against the respondents Technosport London Limited and Mr George Agyeton.

2

BMW is the well-known manufacturer of motor vehicles and is the registered proprietor of the following 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, 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."

3

The action in passing off was treated at trial and on appeal as standing or falling with the trade mark infringement action. It is not therefore necessary to consider it separately.

4

The first respondent, Technosport London Limited, is a company dealing in the repair and maintenance of cars, mostly BMW motor cars and Minis. Mr Agyeton, the second respondent, is the sole director and moving spirit of the company. I will refer to the respondents as TLL save where necessary to distinguish between them. Although TLL specialises in the repair and maintenance of BMW motor cars, it has no formal connection with BMW other than as purchaser and user of BMW manufactured spare parts.

5

BMW complained in the action that TLL had made use of all three of its registered trade marks in various aspects of its business. For example it had used the Roundel on a facia board on the exterior of its former business premises, adjacent to a reception panel and on a banner in the interior of its new business premises, on the outside of a van used to conduct the business and on business cards distributed to customers. In addition, BMW alleged that TLL had used the M Logo on its website. The judge concluded that the average consumer had come to believe that the Roundel and the M Logo would only be displayed in relation to businesses which were authorised by BMW, and that their use would therefore lead the average consumer to believe that TLL was an authorised dealer. There was, accordingly, infringement by use of these marks. There is no appeal from the judge's conclusions on those issues.

6

BMW's allegations of infringement of the BMW Mark concerned the use of the mark in conjunction with TLL's trading name "Technosport". There were three such instances:

i) Shirts. In 2013 Mr Agyeton was photographed at the premises wearing a shirt on the breast of which appeared the word TECHNOSPORT and immediately beneath it the letters BMW. On a separate occasion in 2015 Mr Agyeton was photographed wearing a shirt on which the words TECHNOSPORT BMW appeared on a single line.

ii) The Twitter account. TLL owns a Twitter account with the user name or "handle" "@TechnosportBMW". TLL's Twitter page has a panel which has Technosport@TechnosportBMW prominently displayed. Beneath this address it is explained that Technosport is an independent BMW and MINI specialist in North West London. In order to "Tweet" to Technosport, a Twitter user would use the Twitter handle "@TechnosportBMW", and Tweets received from TLL would be seen as "Technosport@TechnosportBMW".

iii) The Van. TLL owned a van used for short trips around the area where its premises were located. The rear of the van carries the words TECHNOSPORT– BMW across the top as shown below:

I will refer to TLL's signs listed above as "the Technosport BMW signs". It is fair to point out that the allegation of infringement by use of the BMW Mark on the van was not separately pleaded by BMW, although it did plead that the use of the Roundel on the back of the van was an infringement. The judge did not deal separately with the use of the BMW Mark on the back of the van, but TLL waived any objection to BMW's reliance on it in this appeal, as it had been adequately investigated at the trial.

7

The judge summarised the defence put forward by TLL, so far as now relevant, as being 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." Essentially the same point was put as a defence under Article 12(b) and 12(c) of the Council Regulation (EC) 207/209 ("the Regulation" (see below)), but the judge decided without objection from the parties to formulate the issue in this rolled-up form. Having rejected that defence in relation to the Roundel and the M Logo, the judge turned to the allegation of infringement of the BMW Mark by the Technosport BMW signs. BMW supported their case by reference to the fact that authorised BMW dealers tended to style themselves by using a trading name immediately followed by BMW. There were examples in Mr Agyeton's evidence including "Stephen James BMW", "Berry BMW Chiswick" and "Hexagon BMW". The judge's reasoning on this issue is contained in a single paragraph of his judgment, at paragraph 33:

"BMW's argument in relation to the BMW Mark was more subtle and to my mind more flimsy. It was based on the assertion that while the average consumer would not believe that "BMW" conveys any implication of authorised use in general, it does when immediately attached to a dealer's name. It also conveys that implication where used in a manner which, according to the strictures contained in the contracts with authorised dealers, is not permitted use – such as the manner of representation on Mr Agyeton's shirt. In my view, the burden of establishing that the average consumer's perception of BMW signs embraced such subtleties would require more evidence than BMW produced. It would probably need evidence from actual consumers. I find that TLL's use of its BMW signs did not convey to the average consumer any implication of TLL being an authorised dealer."

8

BMW also advanced a case under article 9(1)(c) of the Regulation based on the Roundel and the BMW mark. It was common ground that these marks were marks with a reputation within the meaning of that Article. The judge accepted that there was infringement of the Roundel on this basis, because TLL's use took unfair advantage of the reputation of the Roundel, but rejected the Article 9(1)(c) case based on the BMW Mark.

9

BMW challenges both these conclusions on this appeal. Taking first the Article 9(1)(b) case, Mr Gwilym Harbottle, who appeared for BMW, submitted that the judge's reasons for reaching his conclusion of non-infringement of the BMW Mark under Article 9(1)(b) were inadequate. When all the relevant circumstances were taken into account, and irrelevant matter ignored, the judge ought to have held that the average consumer would see the Technosport BMW signs as conveying the message that TLL was a BMW authorised dealer, or at least economically linked in some way to BMW. The Technosport BMW signs were a trading name or style which identified the business which was offering the repairing services, and did not merely describe what it did. If TLL wished to describe its services it could do so in a number of ways which did suggest an economic link. The judge had been wrong to require further evidence to reach this conclusion. His reference to the need for evidence from actual consumers meant that he had taken account of an irrelevant consideration: the court is not assisted by evidence of actual consumers (other than spontaneous examples of confusion) in a case concerning an ordinary consumer product. If the judge was correct, any independent repairer could incorporate the letters BMW into its trading name in the way TLL had done, without infringing the BMW mark. This was a consequence which was therefore of some importance to BMW.

10

Miss Charlotte Scott, who appeared for TLL, supported the judge's reasoning when considered as a whole. The judge's conclusions were essentially factual and evaluative ones which this court should not interfere with absent an error of principle.

The law

11

Article 9(1) and (2) of the Trade Mark Regulation read at the material times as follows:

"1. A Community trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:

(a) any sign which is identical with the Community trade mark in relation to goods or services which are identical with those for which the Community trade mark is registered;

(b) any sign where, because of its...

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4 cases
  • Coreix Ltd v Coretx Holdings Plc and Others
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    • Intellectual Property Enterprise Court
    • 11 Julio 2017
    ...for the other. So there may, in truth, have been limited opportunity for real confusion to occur. 26 Similarly in BMW v Technosport [2017] EWCA Civ 779 Floyd LJ (with whom Patten LJ agreed) held as follows at [24]: "I also think the judge was wrong to say that it required evidence of actua......
  • Nintendo Company, Ltd v Sky UK Ltd
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    ...does not apply for two reasons. First, because a significant number of consumers would be misled: see in particular Bayerische Motoren Werke AG v Technosport London Ltd [2017] EWCA Civ 779, [2017] FSR 35 at [18]. Secondly, because the operators' use is not in accordance with honest practic......
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    • 19 Julio 2023
    ...to occur.’ 53 On the same point, the Cs also relied on passages from Jack Wills v House of Fraser [2014] FSR 39; BMW v Technosport [2017] EWCA Civ 779 at [24]; and Fine & Country Ltd v Okotoks Ltd [2012] EWHC 2230 (Ch), (a passing off case). It is sufficient to cite this passage from the ......
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    ...account all relevant circumstances, rather than there being any requirement for evidence from actual consumers: see BMW v Technosport [2017] EWCA Civ 779, per Floyd LJ (with whom Patten LJ agreed) at [24]. 75 Thirdly, infringement has to be assessed at the start of the infringing act in que......
3 firm's commentaries
  • Trade Mark Law Update – The Pitfalls Of Using Someone Else's Trade Mark
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    • Mondaq UK
    • 23 Agosto 2017
    ...may draw the dividing line between "informative use" and "misleading use". In the case of BMW v Technosport London Ltd & Anor [2017] EWCA Civ 779, the Court of Appeal looked at instances where Technosport London Limited ("TLL"), a company dealing in the repair and maintenance of cars, m......
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    • Mondaq UK
    • 26 Julio 2017
    ...may draw the dividing line between "informative use" and "misleading use". In the case of BMW v Technosport London Ltd & Anor [2017] EWCA Civ 779, the Court of Appeal looked at instances where Technosport London Limited ("TLL"), a company dealing in the repair and maintenance of cars, m......
  • Trademark Fair Use: A Subjective Call No Matter What Side of the Pond
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    • JD Supra United States
    • 10 Agosto 2017
    ...best assessed from the perspective of an experienced trademark attorney. [1] See Bayerische Motoren Weke AG v. Technosport London Ltd. [2017] EWCA Civ 779, No. A3 2016 [2] New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). [3] Id. at 308. The author would ......

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