Author: Ben Milloy
The UK Court of Appeal has recently provided some limited guidance on the fine line between using a brand legitimately to explain to the public the service that a company provides, and using a brand as a means of misleading the public into believing it is somehow linked to, or authorised by, the brand in question.
This particular case concerned the activities of Technosport London Limited (TS), a car repair company specialising in repairs to BMW and Mini cars. TS had been making significant use of BMW’s registered trade marks (including the BMW word mark and the BMW “Roundel” logo), both in isolation and in conjunction with its own mark TECHNOSPORT. The marks had appeared on its business premises, business cards, website, staff clothing, van and Twitter.
BMW initially sued TS for trade mark infringement in England and Wales’ specialist IP court, the Intellectual Property Enterprise Court (IPEC). IPEC found infringement insofar as TS had used the BMW marks in isolation; however, it did not find any infringement where the BMW mark had been used in conjunction with TECHNOSPORT (such as the Twitter handle @TechnosportBMW). In those specific cases, rather than such usage suggesting a “commercial connection” between BMW and TS (i.e. as an “authorised dealer”), IPEC considered that the inclusion merely explained to the public what TS did (i.e. repairs on BMW cars). As such, TS’s use had been fair.
Dissatisfied with the outcome, BMW appealed. It argued that the immediate juxtaposition of TECHNOSPORT and the BMW marks did give the impression that the two businesses were economically linked, rather than merely describing what TS did. On this occasion, the Court of Appeal agreed with BMW. It said that, looking at the use of the BMW marks in context, the usage was not merely “informative”, but “misleading”. In particular, it noted that TS had not made any attempt to show that BMW was being used in an informative sense (for instance, using a phrase like “BMW repair specialist” and/or keeping its own brand TECHNOSPORT as clearly distinct from the BMW marks). Instead, TS had simply incorporated the BMW marks into its trading style without any explanation.
The Court of Appeal’s decision is a small victory for trade mark owners and their authorised agents and/or resellers as it protects them from third parties unfairly trading off their name and reputation.
Ben Milloy, Associate, Fladgate LLP (firstname.lastname@example.org)