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4 August 2020TrademarksMuireann Bolger

BMW wins TM suit at English High Court

BMW has won a trademark suit in a long-running dispute over the infringement of its marks and designs for alloy wheels, according to a decision handed down by the English High Court on Thursday, July 30.

The German manufacturer accused UK-based companies Premier Alloy Wheels and DGT  Wheels and Tyres along with Devon Thompson of importing counterfeit alloy wheels from China  with designs identical to those for which BMW holds registered community designs (RCDs). It also held that the defendants imported counterfeit wheel badges with signs identical to BMW’s trademarks and that they stored and sold these items.

BMW also accused Mr Thompson’s son, Jerome Layzell and Mr Layzell’s grandfather, David Layzell of being involved in the infringing acts.

The dispute began in 2012, when  BMW issued a solicitor’s letter to Devon Thompson, then owner of DGT, alleging that his business was offering a variety of alloy wheels that infringed BMW’s IP. Thompson, who went on to become a sole director of Premier Alloy Wheels, signed a contract in November 2014 agreeing not to infringe a range of the vehicle manufacturer’s IP rights. Jerome Layzell became sole director of DGT in 2012 and his grandfather, David, worked part-time in the business helping with clerical work.

In June 2018, BMW applied for an interim injunction and search order against the defendants, which was granted by the English High Court. During the search, officials found more than 1,600 infringing wheel centre caps and other badges, including those bearing ‘BMW’ and ‘MINI’ trademarks in DGT’s warehouse.

In addition, BMW’s evidence showed that the defendants bought replica alloy wheel products, including some with the BMW roundels on them, from suppliers, including one called Euro Racing in China. The defendants also received replica BMW stickers from a company called Ark Nova.

The defendants issued a counterclaim attacking the validity of the RCDs, which included a number of poor quality photocopies of prior art alloy wheels. At a case management conference heard on 14 February 2019, the defendants accepted they would be unable to rely on these items at trial.

The trial was heard remotely by Skype for Business on July 6 and 7 and the court found that the defendants had infringed all BMW’s trademarks, and “committed acts of passing off”.

The court also found in favour of BMW’s claim that six of its designs were infringed, although the company is not entitled to injunctive relief beyond those six RCDs. The court also ruled that Thompson had breached his contract and dismissed the counterclaim for the invalidity of the RCDs.

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