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Motor giant BMW, challenging a decision over the use of its trade mark with which it disagreed, has won its appeal in the Court of Appeal.
The dispute was over the use of BMW trade marks by a small London garage business, Technosport, which repairs and maintains cars – mainly BMWs and Minis – but which is not an authorised BMW supplier.
The trade marks had been used in various places by the garage (such as on their van and on business cards used by employees) and BMW took the owners of the garage to court to stop the use and to claim the profits it had gained from 'passing itself off' as an authorised BMW dealer.
The first trial found that an average consumer would conclude that the logos used 'would only be displayed in relation to businesses which were authorised by BMW' and that the trade marks were infringed.
However, there was also a dispute primarily regarding the garage's Technosport Twitter handle and over the use of the BMW logo on shirts bearing the Technosport name.
The garage argued that these merely reflected the fact that it specialised in the repair of BMW cars, whereas BMW argued that they would also give the ordinary consumer the impression that Technosport was authorised by BMW, the BMW name being commonly used by authorised dealers as part of their brand. This argument was initially thrown out owing to lack of evidence, and the fact that BMW's claim that the precise way Technosport used the BMW trade marks would not have been permitted use by an authorised dealer clouded the issue somewhat.
However, the Court of Appeal concluded that the judge had made an error of principle and that whether the use of the logo was 'informative' (in the sense that this is a garage that repairs BMWs) or 'misleading' (a garage that is authorised by BMW) was an assessment the court should have been able to make.
Lord Justice Floyd considered that BMW had established that Technosport had infringed its trade marks in each case.
Anyone using another organisation's trade marks needs to exercise extreme care to ensure this is not done in a way that breaches its rights.
When a big company gets into a dispute with a small one, one often-used tactic is to flex its considerable financial muscle to sap the other side's will to keep fighting costly legal actions. Had BMW not won at this stage (when the costs to be borne by the loser will already be well into six figures), it could have afforded to continue the litigation, which was unlikely to be the case for Technosport, whose controlling director was also named as a defendant in the case.