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| 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:
Introduction
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.
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| The Antogonist |
In
the above case, three marks from BMW featured, being the word mark BMW, the Roundel
device, and the M logo. Technosport
specialised in the repair and maintenance of BMW vehicles, but had no formal
association with BMW except as a purchaser and user of BMW manufactured spare
parts. BMW objected, amongst
on other grounds, to the use of the Roundel device on the exterior of Technosport’s
business premises, on a banner in the interior of its business premises, on the
outside of a van used to conduct the business and on business cards. These were considered to be infringements by
a lower court. The latter held, in particular, that the Roundel had come to be
associated by the public with an official business (para 5).
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):
The court first dealt (para 26) with the
use on the van, which displayed TECHNOSPORT-BMW, and, close by, the Roundel. It was held that the average consumer would
understand the business to be an authorised distributor. Technosport argued that consideration should
be given to TECHNOSPORT-BMW without regard to the Roundel. The court disagreed, with reference to Specsavers International Healthcare Ltd v
Asda Stores Ltd [2012] EWCA Civ 24, where it was said
that one must look at all circumstances, and that “The sign is not to be
considered stripped of its context." (para 87).
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.
Comments
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 ...
