22 June 2017Trademarks

English Court of Appeal rules in favour of BMW in garage TM clash

BMW has successfully appealed against a ruling that had allowed a car repair company to feature ‘BMW’ as part of its brand.

The ruling was delivered at the English Court of Appeal yesterday, June 21.

It stated that Technosport London Limited (TLL), a car repair company, infringed BMW’s trademark rights by using the ‘BMW’ word mark as part of its trading name.

The repair company had t-shirts, vans and a Twitter handle with the ‘Technosport BMW’ trade name, according to the ruling.

TLL claimed the use “did not convey to the average consumer anything more than that TLL traded or specialised in the maintenance and repair of BMW cars”.

In a judgment handed down in April of last year, the High Court ruled in favour of the garage, stating that “TLL’s use of its BMW signs did not convey to the average consumer any implication of TLL being an authorised dealer”.

In its appeal against the decision, BMW said the judge’s reasons for reaching his conclusion were “inadequate”.

“When all the relevant circumstances were taken into account, and irrelevant matter ignored, the judge ought to have held that the average consumer would see the Technosport BMW signs as conveying the message that TLL was a BMW authorised dealer,” it said in the appeal.

Lord Justice Floyd delivered the verdict, and agreed that the use of ‘BMW’ would confuse consumers into thinking TLL is an authorised BMW partner.

“I think that the judge made an error of principle,” he said in the verdict.

“I also think the judge was wrong to say that it required evidence of actual consumers to establish BMW’s case. By focusing on the absence of evidence of particular kinds, it seems to me that the judge lost sight of the need to consider each of the uses in the context in which they occurred.”

Dawn Osborne, partner at Palmer Biggs IP Solicitors and representative of BMW, said: “We are delighted at this clarification of the law following the BMW v Deenik case that use of a brand name to indicate what a business does will not extend to inclusion of a brand in a trading name.

“This is of great help in the context of social media where often the only clue as to the identity of a business is its social media handle.”

Lord Justice Patten agreed with Floyd’s findings.

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