Monday, 3 July 2017


Sheer Driving Pleasure: Trade Mark Law Through The (BMW) Cases

The Prof
Prof Wim Alberts contacted our resident rhino to post this piece in which he traverses the African savannah, English countryside and Swedish fjords to establish the true meaning of trade mark infringement, in a beemer. This, prompted by the latest BMW decision to emerge from the UK, just last month. Enjoy the ride:


A newcomer to the South African trade mark scene can do much worse than to start off his or her career by analysing all cases involving BMW.  This company aggressively enforces its trade mark rights, and we also benefit from it.  Its cases have often clarified legal points or made new law, also in other areas such as design law.  Apart from other decisions dealing with descriptive use etc, first place must go to the Verimark case however.  Many years ago there was the much-talked-about McDonald’s judgment, a few years ago the Laugh It Off decision was (unfortunately?) dominant, and the most worrisome ruling to the trade mark community.  But Verimark is now truly “well-known”.  And, of course, the vital passage in paragraph 7, known by heart by many candidate-attorneys:

“What is, accordingly, required is an interpretation of the mark through the eyes of the consumer as used by the alleged infringer. If the use creates an impression of a material link between the product and the owner of the mark there is infringement; otherwise there is not.”

Here the court made clear what the test for primary infringement is, and also what the role of the origin function/use as a trade mark in our law is (as clarified later in paragraph 3 of the Commercial Auto Glass ruling).  And Verimark, in paragraphs 13-14, also provided guidance on certain dilution aspects – to what is left of our law in this regard after the Laugh It Off judgment.  

United Kingdom

From the recent British case in Bayerische Motoren Werke Aktiengesellschaft v Technosport London Limited it appears that the vigorous enforcement of BMW trade mark rights is a trend that can also be found in other countries. 

The Antogonist

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


·        Shirts – the leading light behind Technosport wore shirts with Technosport and the BMW mark on it in various forms


·        Twitter account – Technosport had a Twitter account with the user name "@TechnosportBMW"


·        The van – Technosport owned a van used in its business with the words TECHNOSPORT – BMW across the top

In relation to the law, the court had regard to Bayerische Motorenwerke AG v Deenik [1999] ETMR 339, where the European Court of Justice was asked whether advertisements such as "Repairs and maintenance of BMWs", constituted infringement of a BMW trade mark under Directive 89/104 to approximate the laws of the Member States relating to trade marks.  The court answered that question in the following way at paragraph 64:

"In the light of the foregoing, the answer to be given to the fourth and fifth questions must be that Articles 5 to 7 of the directive do not entitle the proprietor of a trade mark to prohibit a third party from using the mark for the purpose of informing the public that he carries out the repair and maintenance of goods covered by that trade mark and put on the market under that mark by the proprietor or with his consent, or that he has specialised or is a specialist in the sale or the repair and maintenance of such goods, unless the mark is used in a way that may create the impression that there is a commercial connection between the other undertaking and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship between the two undertakings."

The court stated the central problem as follows (para 18, emphasis added):

Nevertheless, the Roundel was excluded: “I have, however, considered what message the van would convey in the absence of the Roundel, as that is the issue which now divides the parties.”  The court found that the average consumer will see the trading style to have an official link.  One reason is that there is nothing in the sign TECHNOSPORT-BMW to indicate that the sign is being used informatively. Although phrases such as "BMW repair specialist" clearly informs the average consumer to the nature of the business, the inclusion of BMW into the trading style does nothing of that kind. It would have been easy to state "BMW repair specialist", distinct from the word BMW (para 28). 

Also, “the presence of a risk of the kind in question does not depend on it being the universal practice of authorised distributors to use that trading style, although of course many did. The risk exists because the use of a trade mark within a trading style in this way, and without further explanation, is naturally taken by the average consumer as an identifier of the business and the services it provides.” (para 31).

Infringement was also found in relation to use on shirts and in the twitter address.


The principle that can be derived from the case is that you may describe your type of business with some reference to a trade mark.  However, a third party’s mark should not be used in a manner that creates the impression of the existence of a formal association.  This the court found occurred due to the link made between the name of the business and the BMW trade mark.

It would seem that one may say you are “Specialising in BMWs” or a “BMW Specialist”.  How is it ascertained though that someone is a specialist?  In the medical field for instance, the specialist factually specialises in one field, but also has a formal qualification.

To provide a proper perspective on the matter, a brief Swedish excursion is perhaps apposite.  In Aktiebolaget Volvo v Heritage (Leicester) Limited [2000] FSR 253, the respondent was an authorised Volvo dealer for a number of years.  After the termination of the dealership agreement, the mark was still used on signage, prominently, in the format “Independent Volvo Specialist.”  The mark was also used on letterheads.  Reliance was placed on a provision protecting descriptive use.  It was accepted that the use was intended to indicate the purpose of the service.  The question that the court however had to consider was whether the use was in accordance with honest practices in industrial or commercial matters.  In this regard it was held (page 263) that:

“In my judgment the defendant’s use of the word ’Volvo’, comprising the registered trade mark of the claimants, in the context of its having previously for so long been an authorised dealer of Volvos, was calculated to cause at least confusion in the minds of consumers, and probably, indeed, also the belief that there was still, to put it at its lowest, some trading connection between the defendant and Volvo.”

The court had particular regard to the Deenik case.  It was said (page 264) that a proprietor cannot prevent a third party from using his trade mark for informational purposes.  However, the position would be different if the impression is created that there is a commercial connection between the party and the proprietor, and in particular that the reseller’s business is affiliated to that of the trade mark proprietor’s distribution network. 

The important principle stated by the court was (page 265) that the defendant could properly describe himself as a Volvo service specialist, on condition however that a distinction be made between his status as such and that of an authorised dealer.  The matter is then seemingly not controversial, because in the Technosport judgment the court (and BMW) had no problem with the use of "BMW repair specialist" (para 28).


Thanks to the Prof ...




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