Car manufacturers’ trade marks: how far can independent garages go?
Well-known car manufacturers often have an uneasy relationship with independent repairers who use genuine parts to repair their vehicles. In BMW v Technosport London Ltd, where members of Hogarth appeared on both sides, BMW sued one such repairer in respect of uses in and around its garage of signs which were identical with or similar to BMW’s registered trade marks.
In the IPEC ( F.S.R. 34), HHJ Hacon held that the Defendant’s uses of the well-known BMW Roundel and BMW’s “M Logo” infringed. The evidence showed that these logos were only ever used by authorised dealers (and the occasional infringer). Accordingly their use would be taken to indicate that the Defendant was authorised by BMW.
The Judge reached a different view on the Defendant’s uses of the sign “Technosport BMW” on a shirt, as a Twitter handle and on the back of the Defendant’s van (in this instance including a hyphen). According to the Judge, these uses did not infringe because they only conveyed a descriptive message.
Both parties sought permission to appeal, but only BMW obtained it. The Court of Appeal reversed the Judge’s decision on the “Technosport BMW” signs ( F.S.R. 35). It held that the uses of the BMW signs went beyond being merely “informative”. There was an obvious risk that the average consumer would take them as indicating a commercial connection in the form of authorisation by BMW. The Court of Appeal did not find it necessary to reach a decision on whether the uses complained of took unfair advantage of BMW’s marks.
While each case depends on its individual facts, the IPEC and Court of Appeal decisions provide useful guidance as to what is acceptable in this field. The use without more of a truthful statement of fact such as “BMW repair specialist” is unlikely to infringe. By contrast, repairers should avoid:
- using logos which are normally only used by authorised dealers; and
- combining manufacturers’ trading names with their own trading names.