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Spare parts battle won by BMW through trade mark protection

Written by Ellis Sweetenham on 26 June 2017

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The relationship between IP protection and spare parts has been a bumpy one with differing decisions in relation to what IP right can prevent the production or sale of spare parts and those that cannot.

There has been a level of uncertainty surrounding the whole area, which each decision confusing the matter more.

Therefore, when BMW waded in with another claim against a spare parts manufacturer, the IP world braced themselves for more confusion.

However, much to everyone’s relief some clarity was given on trade mark’s position in relation to spare parts.

BMW alleged that spare parts company Technosport had been using three of their registered trade marks in the following ways:

  1. on a facia board on the exterior of its former business premises;
  2. in the interior of its new business premises;
  3. on business cards;
  4. on its website;
  5. on its official shirts together with the word "Technosport";
  6. on Twitter, including in the Twitter handle @TechnosportBMW;
  7. on the rear of its van together with the word "Technosport".

The marks in question were the word mark ‘BMW’, the BMW ‘roundel’ (their circular logo) and an ‘M’ logo. All three of these were successfully registered trade marks.

BMW argued that all uses listed above infringed at least one if not all three trade marks.

When first considered, the Intellectual Property Enterprise Court found that only uses 1-4 infringed BMW’s registered trade marks whereas 5-7 were not infringing.

BMW appealed this decision to the Court of Justice for the European Union.

The CJEU were in agreement regarding the uses in 1-4 and Technosport’s infringement through those uses therefore concentrated on uses 5-7.

The CJEU stated there was two types of use of a trade mark in relation to spare parts, being

  1. Informative use which would be legitimate use- eg ‘Our businesses uses genuine BMW parts’
  2. Misleading use which would constitute infringement- eg ‘Our business has a commercial connection with BMW’

Therefore, if any of the uses in 5-7 created a connection between Technosport and BMW and therefore lead consumers to believe the two businesses had a commercial connection, they would be deemed as misleading use and could infringe the BMW trade marks.

The Court then proceeded to apply this test to each of the outstanding uses to determine if Technosport had committed further infringement.

Due to a lack of context to suggest otherwise, the use on the shirts and the use of the twitter handle conveyed the impression that Technosport had been authorised by BMW and was therefore misleading use.

Lastly, considering the van which displayed a large image of the BMW ‘Roundel’ very clearly on the back as well as ‘Technosport- BMW’, the court found again there was nothing to suggest that the use of merely informative and the use of the roundel trade mark as Technosport had with no further explanation, was strong evidence that any consumer would identify the business has having a connection with BMW.

This decision was welcomed as it now makes clear that a business can use another’s trade mark in relation to spare parts so as long as it has been made clear that there has been no authorisation or commercial connection made between the brand and the business.

Any attempt to attract customers using the brand’s marks will constitute infringement.

If you'd like to know more about this article please send an email to Ellis Sweetenham quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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