Authorised or unauthorised to use BMW’s trade marks – why instruct a solicitor?
This week’s round-up of the Intellectual Property Enterprise Court (IPEC) includes a very interesting case involving three of BMW AG’s trade marks and their unauthorised use by Technosport – a specialist in BMW spare parts and repairs in London.
BMW has had similar run-ins in the past. In 1999 a European court found against them in a case where the defendant had been using the BMW marks to describe their repair services. The judges in that case said that BMW should not be able to stop repairmen who need to use the BMW marks to legitimately describe the services they offer.
It was interesting therefore, to see how the IPEC would deal with a very similar issue.
What had Technosport done?
- used BMW’s “BMW” word mark, their “M” logo mark (which is used on their sports range) and the famous “BMW” logo mark; and
- Ageyton (the sole proprietor of Technosport) had used these trade marks on signage within his workshop, on uniforms worn by staff and even on the company vehicles.
What arguments were made?
BMW argued that:
- Technosport infringed their trade marks because they were never given a license to use them – a procedure that applies to all of BMW’s “authorised dealers”; and
- Technosport’s actions would confuse the public, and were aimed at taking unfair advantage of BMW’s reputation.
Mr. Ageyton maintained that:
- he needed to use the trade marks to describe his products and services; and
- by allowing Technosport to buy and sell authentic BMW products they had given him consent to use the trade marks in any case.
What was decided?
Judge Hacon sitting in the IPEC decided almost entirely in favour of BMW. Any early hope that David would overcome Goliath as in the 1999 BMW case had since been lost. While Hacon agreed that the “BMW” word mark needed to be used by Technosport to describe the latter’s services, they were not permitted to use the other two marks.
Use of the two logos (the “BMW” logo, and the “M” logo) would confuse the public as to who is actually behind the services coming from Technosport. It gives the impression that Technosport are official partners of BMW AG, and considering they are not, takes unfair advantage of BMW’s reputation.
In addition, it was said that no consent had been given to use any of the marks, and that Mr. Ageyton knew this (he had received a letter before action in 2006!). As Mr. Ageyton was the sole director and the “guiding mind” of Technosport London Limited, he also had the misfortune of being deemed personally liable!
What’s the lesson here for the rest of us?
Well firstly, if you ever receive a letter before action, deal with it! In cross-examination Mr.Ageyton said he had forgotten about the letter he received from BMW in 2006 by 2011 when he put up all the BMW signage in his workshop (*which the court – unsurprisingly – didn’t believe).
Secondly, remember that trade mark infringement is a strict-liability claim. This means the claimant does not have to prove any intention to confuse the public or take unfair advantage of a mark. Indeed the court accepted that Mr Ageyton did not intend to profit from BMW’s reputation, he merely wanted to improve his own business by making his specialist skills publicly known. But this was irrelevant – it was enough that his actions had the effect of confusing the public and taking advantage of the BMW trade marks.
So closing your eyes for a few seconds (or 5 years in Mr. Ageyton’s case) and wishing a trade mark infringement claim away will not help. Even in instances where you are willing to drop use of the mark straightaway, there are certain procedures that need to be followed, especially if proceedings have already been issued. You need to ensure that you are protected from the worst that could happen – which can only really be done with expert advice.
If you do end up on the wrong end of an IP infringement claim, bite the bullet and instruct an expert. By cutting corners in not instructing an expert you are in fact exposing yourself to much bigger losses (in the form of damages and paying the other side’s costs!) in the future.
This article is one of many that was featured in our spring hardcopy newsletter. If you would like a copy of our hardcopy newsletter, complete with some delicious yorkshire tea, please email us your name and address.